Breaking: New referral to the Enlarged Board of Appeal on double-patenting

An EPO Board of Appeal has referred the question of double-patenting to the Enlarged Board of Appeal (EBA). 

The issue of double-patenting has been considered before by the EBA, in G 1/05 and G 1/06. In these decisions the EBA proposed that the principle that double patenting should be prohibited given that an applicant "had no legitimate interest in proceedings that gave rise to the grant of a second patent in respect of the same subject-matter for which he already held a patent" (G 1/05, r. 13.4).

However, there are two situations where the issue of double patenting may arise - divisional applications and internal priority. In the latter case, it seems that an applicant may have a legitimate reason for the second patent, as this will have a later expiry date than the first (patent term being determined by filing date and not priority date).

Seeing double

Since G 1/05 there have been conflicting TBA decisions on the issue of double patenting in the case of internal priority.  The TBA in T 1423/07 found that legal basis for preventing double patenting can not be found in Article 125 EPC or Article 60 EPC, and that an applicant may have a legitimate interest in the pursuing the second application in cases of internal priority (Headnotes 1-3) (IPKat post here). By contrast, the TBA found in T307/03 that Article 60 EPC prevents double patenting even in cases of internal priority (Headnote 1) (IPKat post here) .

In a welcome move, the technical board of appeal (TBA, 3.3.01) in T0318/14 have now referred the following questions to the Enlarged Board: 

1. Can a European patent application be refused under Article 97(2) EPC if it claims the same subject-matter as a European patent granted to the same applicant which does not form part of the state of the art pursuant to Article 54(2) and (3) EPC?

2.1. If the answer to the first question is yes, what are the conditions for such a refusal and are different conditions to be applied where the European patent application under examination was filed

a) on the same date as, or

b) as a European divisional application (Article 76(1) EPC) in respect of, or

c) claiming the priority (Article 88 EPC) in respect of a European patent application on the basis of which a European patent was granted to the same applicant?

2.2. In particular, in the latter case, does an applicant have a legitimate interest in the grant of the (subsequent) European patent application in view of the fact that the filing date and not the priority date is the relevant date for calculating the term of the European patent under Article 63(1) EPC. 

The appealed decision was a rejection from the Examining Division of application EP2429542. The application was rejected on the grounds that the claims covered subject matter 100% identical with the granted priority application (EP09159932) and the reasoning of G 1/05.

In the statement of grounds of appeal, the applicant (Nestec) argued that:

"1. In view of the fact that there is no principle of law generally recognized in Contracting States for refusing a patent application for double patenting, refusal of a European patent application for double patenting can not be based on Article 125 EPC,

2. If double patenting arises from internal priority, the applicant has a legitimate interest in the grant of the subsequent application claiming priority from an already granted European application with identical claims and identical Designated Contracting States in view of the fact that the filing date and not the priority date is the relevant date for calculating the 20-year term of the patent."

The TBA decision (T0318/14) has not yet been issued but the minutes of the oral proceedings can be found here. The IPKat will bring you further commentary as the case progresses.