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We reported in February 2019 that questions concerning double patenting had been referred to the Enlarged Board of Appeal by the Board of Appeal in case T0318/14. Despite the oral proceedings (during which the referral was made) having been held in February 2019, the Board of Appeal did not issue a written decision until December 2019. Consequently, the Enlarged Board of Appeal did not formally receive the referral until recently. The referral is now pending before the Enlarged Board of Appeal as G4/19.
As we reported previously, the following questions have been referred to the Enlarged Board of Appeal:
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 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 legal background behind the questions is discussed in our earlier news item.
Practitioners in Europe will be hoping that the Enlarged Board takes the opportunity to provide some much-needed clarity in this area of law. There are no explicit provisions in the EPC that cover double patenting, so there is at present considerable confusion over whether double-patenting even exists as a concept, and if so, what it means in practice. It will be hoped that the Enlarged Board will consider not only the questions of what “the same subject matter” means, and whether the two cases have to be related by a common priority claim, but also the question of what “the same applicant” means. It has been a feature of patent law that two different applicants who each file a patent application on the same day for the same invention can each proceed to obtain a patent as if the other application did not exist. Even if double-patenting does exist as a concept, can it be avoided by assigning one of the cases to a different applicant prior to grant?
It will probably take the Enlarged Board of Appeal around 12 months to issue a decision. In the meantime, the EPO has announced that it will be staying all proceedings in which the “decision depends entirely on the outcome of the referral” until the Enlarged Board of Appeal issues its decision. We will report again when there is any further news.