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The Enlarged Board of Appeal of the European Patent Office (EPO) has announced that they are now considering a referral relating to double patenting. Double patenting occurs when two patents are granted that relate to identical subject matter. Many jurisdictions, including the UK, have specific provisions that prohibit double patenting. However, the EPO does not have such provisions, and thus there is an ambiguity as to whether or not the EPO can object to a European patent application on grounds that it would lead to double patenting.
The applicant filed a European patent application (‘the earlier application’) relating to “Prevention and Treatment of Allergic Diarrhoea”. The same applicant subsequently filed a priority claiming application (‘the later application’) within the 12-month priority deadline. The earlier application proceeded to grant, and the applicant continued to prosecute the later application.
The later application was then refused by the examining division of the EPO on the grounds that it related to “100% identical” subject matter to the earlier application, and thus are not allowable in line with G1/05 and G1/06 (which set out that divisional applications having identical subject matter to the parent application are not allowable). The examining division also refused the later application on the grounds that the applicant had no ‘legitimate interest’ in having the later application grant, given that they already had a patent to identical subject matter stemming from the earlier application.
The applicant appealed this decision to the Boards of Appeal, on the grounds that the refusal of the later application was incorrect. This was based around the argument that this case is distinct from that considered in G1/05 and G1/06, as internal priority claiming applications (where a priority is claimed from a European application, not an application from another territory) are distinct from divisional applications. Thus, the applicant (now appellant) submitted that the examining division incorrectly applied the law when refusing the later application. Further, the appellant submitted that extending the term of protection by a year (by filing the later application a year after the earlier application) does constitute a ‘legitimate interest’ and thus could not validly be refused for this reason.
On consideration of the appellant’s submissions, the Board of Appeal decided that in order to properly decide this matter, the Enlarged Board must clarify the below questions.
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?
In simpler terms, this question is asking whether double patenting is permissible in a case as outlined above, where an internal priority is claimed. Article 54 EPC is mentioned as this governs what documents are considered state of the art. In this case, the earlier application does not form part of the state of the art, so it raises a question on whether the later application can be rejected, in light of the EPC’s silence on double patenting.
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?
This question seeks to clarify in which cases the EPO may reject cases on the grounds that they would give rise to impermissible double patenting, (if the Enlarged Board find in response to question 1 of the referral that double patenting is impermissible).
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?
This final question seeks to clarify the appellant’s assertion that extending the term of extension (by a year to 21 years from the original priority date) is a ‘legitimate interest’ in wanting to obtain a patent, and not ‘gaming the system’, given that it is generally understood that the Article 63(1) EPC allows a 20 year term of protection.
We will keep you updated with any further developments in this referral, or if the Enlarged Board decides to take on any more referrals.
If you have any questions regarding this referral, please contact us to speak to one of our patent attorneys.