The Enlarged Board of Appeal of the European Patent Office (EPO) has announced that it has made a decision on the G4/19 referral, relating to whether double patenting an invention is permissible under the EPC. This article looks at the decision made, the Enlarged Board’s reasoning for this decision and what this means for applicants for and proprietors of European patents. Our earlier article on this referral can be found here.

The Referral

The G4/19 referral comprised three questions: the first was aimed at whether double patenting is a ground for rejection under the EPC; the second sought to clarify the conditions in which double patenting objections can be raised; and, the third sought to clarify whether there is a ‘legitimate interest’ in the grant of a subsequently filed European patent application due to the extension of the protection period from 20 to 21 years. The questions are as follows:

1. Can a European patent application be refused under Article 97(2) EPC if it claims the same subject matter as a European patent which was granted to the same applicant and 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 depending on whether 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 last of these cases, does an applicant have a legitimate interest in the grant of a patent on 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 Decision

The Enlarged Board issued their decision on 22 June 2021, answering two of the three questions in the referral.

1. A European patent application can be refused under Articles 97(2) and 125 EPC if it claims the same subject-matter as a European patent which has been granted to the same applicant and does not form part of the state of the art pursuant to Article 54(2) and (3) EPC.

2.1 The application can be refused on that legal basis, irrespective of whether it a) was filed on the same date as, or b) is an earlier application or a divisional application (Article 76(1) EPC) in respect of, or c) claims the same priority (Article 88 EPC) as the European patent application leading to the European patent already granted.

Question 2.2 was not answered, as it was considered moot in view of the answer to questions 1 and 2.1.

The decision was largely based on the Enlarged Boards interpretation of the ‘travaux préparatoires’ (preparatory works) of the EPC, in which the delegations of the various members states working to put together the EPC discussed the issues of double patenting. The consensus of the delegates was indeed that double patenting should not be permitted, although no language to this effect was included within the EPC itself, which gave room for the G4/19 referral.

What this means

This decision makes clear that double patenting is not permitted by the EPO which is in alignment with the national provisions of many member states. However, there remain open questions as to what constitutes “the same subject-matter”, i.e. to what extent do the claims of the patents in question need to be separated to avoid a double patenting rejection, and also what constitutes “the same applicant”, both of which are central tenets for double patenting.

If you have any questions regarding this decision, please contact us to speak to one of our patent attorneys.