The EPO’s practice on double patenting has been rather settled over the past decade. As indicated in the EPO’s Guidelines for Examination, two or more applications of the same effective date filed by the same applicant may proceed to grant if the claims are not identical in scope.
However, the case law on which these guidelines are based made obiter comments that this position is based on the reasoning that an applicant has no legitimate interest in proceedings leading to the grant of a second patent for the same subject-matter if he already possesses one granted patent for that subject-matter.
In an appeal from a decision of the Examining Division on EP 2429542, this point is being challenged and the question has now been referred up to the Enlarged Board of Appeal.
The Appellant’s position is that there is one circumstance in which an applicant does have a legitimate interest in having a second EP patent granted to him with identical claims. This situation is where the second EP application claims priority to an earlier EP patent of the applicant and the claims in each are identical. In these circumstances the second patent will expire a year later than the first (patent term is calculated from the filing date, not any applicable priority date) and so the Appellant argues that the benefit to the applicant of an additional year of patent protection for the claimed subject matter is sufficient to satisfy the legitimate interest test.
The exact questions referred to the EBA are recited below.
The implications of this referral are not entirely clear. At the very least, we should receive a little more certainty on the extent to which EP patent applicants can pursue similar claims in different EP patent applications. This is of course welcome, but this particular circumstance is rather niche and perhaps limited to inventions in the pharmaceutical space where an extra year’s protection at the 20-year point can have enormous value. However, the wording of question 1 does allow the EBA a chance to take a second look at the practice of double patenting as a whole and this has the potential to reopen the settled practice we have enjoyed over the past decade.
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?