Enlarged Board of Appeal decision G4/19

The question of "double patenting" has been lurking within the EPO for some time and has now come to something of a conclusion with the decision in case G4/19. The short answer is that no, two patents cannot be granted to the same applicant for the same invention. Unusually, there isn't actually much more to it than that, so feel free to stop reading now. 

This case came about as an applicant had filed two applications with a later application claiming priority from the earlier application.  The applicant sought grant of substantively identical claims in each application. The examining division asserted that the later application could not be granted due to a prohibition on double patenting. However, such a prohibition is not clear from the EPC, particularly where a party argues they have a legitimate interest in grant of a second patent. In this case the legitimate interest was argued to be that the second patent would expire a year later than the first one and hence refusing the second application would deprive the applicant of a year's patent term. 

The Board of Appeal referred the question to the enlarged board in the following form:

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? 

After an extensive review of the case law and diplomatic discussions which led to the EPC, the Enlarged Board concluded yes, an application can be refused if it claims the same subject matter granted to the same applicant on a different application. 

A subsidiary question asked:

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? 

The Enlarged Board concluded that different conditions did not apply to different circumstances and that in all cases where the situation of the first question applies an application can be refused. 

A final question asked:

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? 

However, in view of the answer to the previous question this does not require an answer. 

The conclusion is therefore clear - the EPO can (and probably will) refuse to grant a second patent to an applicant where the claims provide the same scope of protection as an earlier patent. It is probably worth noting that the conditions for refusal are not a ground of opposition and so if a patent does "sneak through" the EPO it seems unlikely it could be challenged after grant. 

The Enlarged Board's decision is limited by the key requirement for "the same applicant" in each application. It appears that the restriction can easily be avoided by assigning the later application to a different, but related, entity prior to grant. This decision may therefore turn out to be a legal exercise that has little effect in reality. 

This article is a part of our EPO Practice and Peculiarities series. Click here to explore.