From October 2016 to March 2017 the team is joined by Guest Kats Rosie Burbidge and Eibhlin Vardy, and by InternKats Verónica Rodríguez Arguijo, Tian Lu and Hayleigh Bosher.

Friday, 20 March 2009

Double Patenting at the EPO - a new view

It is generally thought at the EPO that it is a Bad Thing to have two patents granted to the same applicant to cover the same invention.  This is known as Double Patenting, and there are provisions under national law to prevent this from happening (section 18(5) of the UK Patents Act 1977, for example).  Unfortunately for the EPO (and as confirmed by T 587/98), there is no such provision in the EPC.  Or so the IPKat thought.  

According to the recently issued decision T 307/03 (currently available from epoline on application 00118123.9, and from the IPKat's file store here), it is Article 60 EPC that we should be looking at (and not, as the IPKat previously thought, Article 125).  The Board's reasoning is as follows:
"Article 60 EPC (identically worded under the EPC 1973 and 2000) states 'The right to a European patent shall belong to the inventor or his successor in title' [...] From this the Board deduces that under the EPC the prohibition of double patenting applies and that the inventor (or his successor in title) has the right to the grant of one and only one patent from the European Patent Office for a particular invention as defined in a particular claim.  Once a patent has been granted to the inventor (or his successor in title) this right to a patent has been exhausted, and the European Patent Office is entitled to refuse to grant a further patent to the inventor (or his sucessor in title) for the subject-matter for which he has already been granted a patent" (point 2.1 of the reasons)
The IPKat will leave others to determine whether this reasoning is sound or not, but in the meantime he would like to suggest that it might be time to ask the Enlarged Board a couple of questions, since we now have two decisions that clearly arrive at different answers to the same question.  These questions could, for example, be: 
1. If two or more applications for a patent for the same invention having the same priority date are filed by the same applicant or his successor in title, does the EPC have a provision to, on that ground, refuse to grant a patent in pursuance of more than one of the applications?
2. If so, what is this provision and how should it be applied?
Does anyone out there have a suitable appeal in which these questions can be raised?


Anonymous said...

This decision does not at all solve the issue and because of the unconvincing and also otherwise problematic basis (Article 60 belongs to Chapter II of the EPC which relates to entitlement to apply and obtain a Patent rather than excluding anything: it even allows double patenting for the same invention by two different inventors when the application has the same filing date) most certainly will not be followed by other Boards.
Although there appears to be nothing against refusing identical claims from one applicant the issue becomes more complicated when, for example, overlapping claims are concerned or claims have to be amended in opposition and appeal proceedings. Simply refusing those on the basis of the conclusions of T307/03 appears highly questionable.

Graham said...

I am not at all sure about interpreting "a European patent" as "one and only one European patent". Can we use the same logic to infer that Article 58 EPC, which says "a European patent application may be filed by any natural or legal person", means that any person can file "one and only one" patent application, and once you have filed a patent application, that's your lot, your rights are exhausted and you can't file any more European patent applications? I think the Board in T 307/03 have read more into the word "a" than the drafters of the EPC intended.

Anonymous said...

back to basics, EP patent comes into force upon validation, which is governed by national laws, so EPC does not need to include an exclusion on the basis of double patenting. So while one may file a second patent application claiming a previously patented invention, depending on the national law, its validation in individual member countries would not be valid at all. Article 60 details on entitlement of patent filing period. Articel 125 is too general to specify any exclusion period.

Anonymous said...

This reminds me of the decision on claiming priority only once.

Looking at the on-line file, it appears that the oral proceedings were in July 07. The written decision seems to have only just issued, in March 09.

Nearly 2 years to write a decision!

CynSkeptic said...

"Nearly 2 years to write a decision!"

... that's how long it took them to come up with this lame Art. 60 justification for the decision they made at the time...?

Anonymous said...

Although the patent application in question probably got what it deserved, if the decision is applied to refuse a divisional application because it has claims overlapping those of the parent it may be necessary to change an Applicant’s patenting strategy. I have prosecuted cases where, for commercial reasons, a quick grant was required and the Applicant has prosecuted narrow claims to expedite acceptance and filed a divisional application in an attempt to obtain broader/overlapping claims. In the past the EPO has generally allowed such cases providing there has not been substantial identity of claims. If such cases are to be refused on the grounds of “double patenting” I wonder if we may have to explore a disclaimer to the claim of the parent. More questions for the Enlarged Board?

Anonymous said...

I am afraid that the 3rd reaction is wrong: an EP patent has effect from its grant date and because of the grant by the EPO.

In EPC states that have an EPO language and that have joined the London Agreement (i.e. CH, DE, FR, GB, LU, MC), there is no validation whatsoever, and the same holds in other EPC states that have an EPO language (viz. AT, BE, IE) if the EP patent is granted in their national language. Anyhow, any "validation" is just filing a translation and paying a fee, without the national patent office having any right to look into the merits of the EP patent outside the framework of any revocation proceedings. The legal effects of any failure to meet any validation requirements are only that from the validation deadline, the patent is void ab initio, so that within the first 3 months from grant by the EPO the EP patent could have been used in court to get an injunction.

Also, an EP patent can only be revoked on the grounds listed in Article 138/139, so that e.g. Section 18(5) of the UK Patents Act 1977 cannot be used against an EP patent (apart from the fact that even under UK law it does not seem to be a revokation ground but only a ground for the Comptroller to refuse to grant a patent, which does not apply to EP patents as they are granted by the EPO rather than by the Comptroller).

While perhaps relying on Article 60 is somewhat too innovative, the same effect could perhaps be obtained on the basis of Article 125 in view of the general legal principle that without sufficient interest one does not have an action.

Anonymous said...

This looks similar to the logic for double patenting rejections in the USPTO, based on 35 U.S.C. 101 "…may obtain a patent…". See MPEP 804 and 1504.06.

MaxDrei said...

So, on the day of oral proceedings, back in 2007, was there a knee jerk decision (the ratio to be worked out later), followed by two years of behind closed doors discussion with "interested circles" about whether European patent law should be "harmonised" with US 35 USC 101, justified by the need to wipe out a plague of cascading divisionals? Now we're all more relaxed about the number of divisionals, calm and reasoned logic can expose the absurdity of this decision. I see it as DOA, just like the "claim priority once, and that's your lot" decision. See how the Dutch courts deal with streams of divisionals: "Don't come back to my court again, Medinol, till you've got one of your endless string of divisionals past the TBA". BTW, what will the EBA do to the Brimelow Art 52 (ie 35 USC 101) questions now flying? Let's be optimistic shall we, folks, while the Americans struggle with the deficiencies of their 1952 Statute, let's enjoy the self-congratulatory feeling, that the elegant corpus of patent law found in the original 1973 EPC is once again seeing off a detractor.

David, why raise the questions. In civil law mainland Europe, a rogue decision is simply ignored, and then it "goes away". Does anybody today worry about the "just one chance to claim priority" rogue decision?

Anonymous said...

The comments of the Board relating to the possible withdrawal of the earlier granted patent are also, to me, somewhat inaccurate. Since the parent was revoked in opposition proceedings with this decision being under appeal, withdrawal of the appeal would mean that the patent would be revoked ex tunc so no double patenting objection could possible arise.

Erik said...

When taking a peek in the Minutes of the Munich Diplomatic Conference (document M/PR/I) one can simply read the answers to the questions raised by David. Point 665 of the Minutes (Art. 125 EPC) reads the following:

“In connection with Article 125, it was established at the request of the United Kingdom that there was majority agreement in the Main Committee on the following: that it was a generally recognized principle of procedural law in the Contracting states that a person can be granted only one European patent for the same invention in respect of which there are several applications with the same date of filing.”

From this passage it follows that the international legislator regarded Article 125 EPC as the legal basis for a double patenting prohibition.

Surprising to see that more then 10 years after T 587/98, this passage never has been mentioned or discussed. Clearly, what is missing in the Guidelines (part C-IV par. 7.4) is a reference to Art. 125 EPC.

Derk Visser said...

The issue of double patenting was extensively discussed in the preparatory documents of the EPC 1973. Since double patenting was regarded as an issue relating to patents, not to patent applications, and the EPC did not relate to the maintenance of patents, it was left to the contracting states to permit or prohibit simultaneous protection (Travaux Préparatoires 1969, BR/7 e/69, p. 8 point 17). The Inter-Governmental Conference in 1972 endorsed this view, a large majority of the interested circles being in favour of this (BR/168/72). As a consequence, the EPC does intentionally not contain a prohibition on double patenting.

The board of the recent decision T307/03 was probably unaware of the above (see reason 2.3 of the decision). Hence, its attempt and probably any attempt, to base a prohibition of double patenting on the present EPC results a contortion of the law.
Use of Art.60 as a basis for prohibiting double patenting in the recent decision T307/03 is legally not sound, because the provision relates to who has the right to a patent, not to the constitution of the right, as already stated in the first comment of this blog. The same applies to Art.58, which relates to who may file.
Art.125 cannot be used to introduce a prohibition on double patenting in the EPC, because the text of the provision makes abundantly clear that it relates to procedural matters only, not to substantive issues such as double patenting (see also T587/98 r.3.6). The statement on double patenting in relation with Art.125 in the Munich Conference, cited by Erik in the above contribution, shows that the UK delegation could benefit from some training in the EPC.
Art.139(3) is not intended as a general prohibition on double patenting. Its purpose is to avoid that for a single invention both a European and a national patent is granted. It was intended as a first step towards abolition of national patents (Travaux Préparatoires 1962, 3076/IV/62-D, p. 114a).
The sections C-IV,7.4 and C-IV,9.1.6 of the Guidelines are no basis for refusing an application on the ground of double patenting (T587/98 r.3.5 and 3.6).
The statement in decision G1/05 r.13.4 regarding a refusal on the ground of double protection as being non-objectionable, appears to be an oversight on the part of the EBoA.

The legislator clearly missed the opportunity of the EPC2000 to introduce the prohibition in the law. In spite of the clear statements of the legislator that double protection should be dealt with at a national level, most national laws do not have a provision to this end. It is surprising that such a broadly supported principle has not been codified at both international and national level. Hence, we will probably have to put up with case law stretching provisions far beyond the intention of the legislator.

Anonymous said...

Very interesting Derk. Anybody know where I can find the Travaux Préparatoires for EPC 1973 online? The EPO only appears to have the Travaux Préparatoires for EPC 2000. Thanks!

Derk Visser said...

The Travaux Préparatoires of the EPC 1973 will be made available on the EPO website soon. Please check the website.

Subscribe to the IPKat's posts by email here

Just pop your email address into the box and click 'Subscribe':