The EPO's Enlarged Board of Appeal has confirmed the prohibition on double patenting.
Whilst it might sound odd to have two patents for the same invention, some applicants do this to make best use of the differing terms of two patents. For example, a European patent claiming priority from an earlier European priority application can have a term of up to 1 year longer than the granted priority application.
The issue of double patenting has been considered numerous times by the Technical Board of Appeal and there have been conflicting decisions. There is no legal basis in the EPC that explicitly relates to double patenting. However, Article 125 EPC allows the EPO to take into account the procedural principles that are generally recognised in the contracting states.
The Enlarged Board of Appeal has confirmed in this decision that the prohibition on double patenting constitutes a principle of procedural law within the meaning of Article 125 EPC, which is generally recognised in the Contracting States. This provides legal basis for a refusal under Articles 97(2) and 125 EPC for double patenting.
Accordingly, the Enlarged Board held that the prohibition on double patenting applies to all applications which are directed to the same subject matter as a granted patent and which have common designated contracting states. This includes:
- applications filed on the same day directed to the same subject matter;
- divisional applications directed to the same subject matter as the parent; and
- applications directed to the same subject matter as the priority application (internal priority).
This decision affects applicants wanting to take advantage of an extra year of patent term in cases of internal priority. There is still some uncertainty as to whether overlapping claims will be affected by the decision, so professional advice is recommended to reduce the risks associated with these filing strategies. If you would like to discuss this further, please get in touch with one of our patent attorneys.