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Friday, 30 April 2010

Further developments on double patenting at the EPO

Thanks to the excellent EPLaw patent blog, the IPKat has learned of a recent EPO decision, T 1423/07 (available from EPOline here), in which the technical board disagrees with the view taken in T 307/03 (reported by the IPKat here, with commentary from Derk Visser here) on the matter of what, if any, basis there is in European patent law for refusing an application on the grounds of double patenting.

The argument in T 307/03 was based on the rather strange reasoning that Article 60 EPC allowed an inventor the right to be granted one, and only one, patent for his invention. This reasoning does not appear to have been agreed with by anyone else (or at least no one willing to admit it), and is thought by the IPKat to have been one of an occasional series of rogue decisions that the EPO technical boards of appeal like to throw up now and then to keep us all on our toes (anyone remember all that fuss about divisional applications a while ago?).

This now seems to have been shown to be the case, as the technical board in T 1423/07 have stated quite clearly that there is no way that Article 60 could provide basis for refusing a European application under Article 97(2) for double patenting. Contrary to T 307/03, the board in this case found that "the fact that the EPC does not contain any specific provisions relating to double patenting is decisive: in the absence of such provisions, a refusal of a European patent application for double patenting is not possible irrespective of whether or not double patenting is a rare occurrence" (reasons, point 2.3.2).

Since the technical board in this case also found that there was no reason to refer questions to the Enlarged Board, the IPKat wonders if this will be an end to the matter or if there are likely to be further grumblings about double patenting in the future. Merpel and Tufty both suspect that this is an issue that is not likely to go away just yet.

5 comments:

Anonymous said...

In point 2.2.1, the Board answers the question whether double patenting is a matter of procedural law in the affirmative by referring to a passage from the minutes of the Munich Diplomatic Conference of 1973 that reads:
"In connection with Article 125, it was established at the request of the United Kingdom delegation that there was majority agreement in the Main Committee on the following: that is was a generally recognised 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."

Amazingly, after citing this passage the Board goes on to answer the question whether the prohibition of double patenting is a principle generally recognised in the Contracting States in the negative! What?

Reading the comments below the IPKat's March 2009 post, I see that Derk Visser agrees with T 587/98 that double patenting is not a procedural issue. However, I would say it certainly is a procedural issue, albeit with a substantive criterion. This is quite common, e.g. the principle of res iudicata is without any doubt a procedural principle, but to apply it one needs to answer the substantive question whether the matter to be decided is the same.

Anonymous said...

I would believe that it is important in this decision that because the other patent was the priority application, filed about one year before the present application, the applicant has a legitimate interest in getting a patent on the second application, as that second patent would expire about one year later than the earlier patent.

From the discussion on the Enlarged Board of Appeal decisions G 1/05 and G 1/06, as well as the discussion of German case-law in this decision, I would draw the conclusion that absent any such legitimate interest, the EPO ban on double patenting is still very much alive.

Anonymous said...

I agree that the fact that the patent on the priority application expires one year earlier could give a sufficient legitimate interest in the sense of G 1/05 and G 1/06.

However, the Board in T 1423/07 goes much further and explicitly states that the prohibition on double patenting is not a generally recognised principe of law in the Contracting States (point 2.2.3), and that a refusal for double patenting is not possible (point 2.3.2). The decision clearly conflicts with point 13.4 of G 1/05 and G 1/06, even though it is possible to reconcile its concrete end result with point 13.4.

If the (new) president wants, he can safely refer the question of double patenting to the EBA. There are sufficient conflicting decisions, and obiter dicta count too (G 3/93, point 2).

Anonymous said...

This decision states that (i) there is a legislative consensus in the EPC member states that double patenting is not permitted (ii) that this is a matter of procedural law (such that Art.125 EPC might apply) but, (iii) that there is no consensus in the EPC states as to how to deal with such cases. The decision states that only three states provide for the refusal of a patent application by reason of double patenting (Eire, the UK and Germany) whereas all other EPC states which forbid double patenting prevent this from occurring by an automatic loss of rights (e.g. deemed withdrawal or deemed revocation of the earlier filed application/patent when the later one relating to the same invention and claiming the earlier one as priority is filed). The Board then stated that, although there is a general consensus on not allowing double patenting , only a minority of states apply refusal as a sanction. Since the sanction applied by the Examining Division in this case was to refuse the application which duplicated the protection, then, according to the Board, Art.125 EPC could not be applied because this is a sanction not generally recognised in the EPC states.

This decision then went on to exclude the application of G1/05 and G1/06 (which found that double patenting between divisional and parent applications should be prevented) because in this case, the double protection was afforded by a European priority and a subsequent European application claiming that European application as priority and, as pointed out above, there is a year's difference in the life of the patent granted on the earlier and later filed applications.

However, not preventing double patenting because of the lack of a consensus in the EPC states on a procedure for preventing it, when at the same time clearly indicating that there is a consensus that double patenting is not permitted, is a little odd. There is no other sanction available under the EPC to deal with these cases, so what is effectively said is that there is a generally recognised principle that double patenting should not be permitted because of the general application of general principles under Art.125 EPC, but at the same time, this cannot be enforced.

In addition, considering the non-application of G1/05 and G1/06 because of the difference of one year in the protection from divisional cases, it is worth noting that the applicant has a free choice to pursue the later filed application to grant and is not required to pursue the earlier application to grant. Consequently the applicant has the possibility to determine the start and end of he 20 year term. He could file the earlier EP application, claim it as priority for a later filed EP application, allow the earlier application to lapse and then pursue to grant the later filed one, thus gaining one year. All that matters is that there are not two patents for the same invention.

It is also worth mentioning that if two patents are granted for the same subject matter in such cases, any person wishing to annul the patent rights in respect of the subject matter duplicated in these two applications and in respect of the 19 years of overlap of protection between them, would have to file two oppositions at the EPO and pay twice the procedural fees and incur twice the costs.

National nullification proceedings before the courts of the member states may allow consolidated proceedings but there is no precedent for this before the first instance departments of the EPO.

I feel that this matter needs to go the Enlarged Board of Appeal, so that, whatever the outcome, the matter will be settled. Possibly if the Enlarged Board did allow double patenting, it might also indicate that consolidation of opposition cases at the EPO might be allowed, thus mitigating the disadvantages for any potential opponent.

Anonymous said...

Ah, but consolidated proceedings could only be achieved if the patentee agreed (unlikely) or if the Division/Board decided that the opponent was right that there there was double-patenting - which could well require a procedure, oral proceedings, appeal etc. etc. all of its own! Even then, the consolidated procedure could end up lasting twice as long since two sets of dependent claims could form the numerous alternative requests of the patentee. Two proceddings into one doesn't necessarily halve the time/cost/effort...

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