An eye on Europe: Double patenting in the spotlight
Sarah Kostiuk-Smith
From the Editor:

The Enlarged Board of Appeal (EBOA) is the highest tribunal at the European Patent Office (EPO). It answers referred questions on points of law. Its answers clarify, and frequently change, EPO practice. For example, it was a decision of the EBOA that clarified what constitutes a diagnostic method at the EPO (G1/04) and how diagnostic method inventions can be protected. Another decision of the EBOA set the cut off priority date after which old-style “Swiss type” second medical use claims were no longer permitted in EPO applications (G2/08). So when there is a referral, it is often a big deal. The examination of pending applications that hinge on the legal question(s) being answered is often stayed, and it is not uncommon for amicus curiae briefs to be submitted. Questions for the EBOA are referred in specific and limited circumstances, and often arise from specific appeal cases. The EBOA answers the question(s), and the referring Board of Appeal uses the answer(s) to decide the case. A recent referral concerns double patenting. The answers to the three questions may force applicants to rethink their European filing strategies, especially where valuable commercial products are involved.
What is double patenting?
Double patenting is a term used in Europe to describe a situation in which an applicant secures (or tries to secure) two separate patents to the same subject matter. It is distinct from the so-called “obviousness type double patenting” encountered in the US – it is only the scope of the claims that is considered, without regard to their teaching. There is no statutory basis prohibiting double patenting between two European patents/applications. Nonetheless, a double patenting objection based on another European patent is presently a reason for refusal by the EPO, although it cannot be used to attack a patent during post-grant proceedings. The guiding principle at the EPO is that an applicant has no “legitimate interest” in grant of a second patent for the “same subject-matter” already claimed in a first. This understanding has developed through case law and practice. However, the application of that principle, and in particular the interpretation of what is the same subject matter has not always been straightforward, or even consistently applied.1
What questions are being referred?
The referring case (T318/14) relates to an EP application that contains identical claims to its already granted priority filing. So, the two filings share the same applicant and the same priority date, and the applicant is pursuing the same claims. Crucially, the later filing will expire one year later, so at stake is an extra year of patent term. A previous Board of Appeal decision considered this “legitimate interest”, but this was contradicted in the comments of a later decision. Board of Appeal 3.3.01 now seeks clarification on whether extra patent term alone constitutes legitimate interest (Question 2.2). Interestingly however, the referred questions are broader in scope and offer the EBOA an opportunity to provide clarity more generally on this sometimes ambiguous aspect of European patent law. Question 1 asks, in simple terms, if European patent applications can be refused because of double patenting. A negative answer would significantly change accepted practice at the EPO and could ultimately lead to more applicants keeping their European-filed priority applications and/or pursuing much more aggressive divisional filing strategies. Question 2.1 asks, if refusal on the basis of double patenting objections is permissible, does the assessment vary with the relationship between the applications. Should related applications be treated differently to two applications filed on the same day by the same applicant(s)? Does the nature of the relationship between the applications (i.e. by priority claims or as divisional siblings) matter? The questions therefore relate primarily to the relationship between the applications and the principle of legitimate interest, and clarification from the EBOA on these points will be welcome. However, clarification on what constitutes identical subject matter is also needed. In our experience this is often the deciding factor in whether or not there is a double patenting issue in a case. For example, in T0879/12 (Apo-2 ligand/Genentech) the Board had to consider whether double patenting existed with respect to two different types of medical use claims (the so-called “Swiss” type and the EPC2000 type). Their conclusion was “no” as the claim categories were different, but where the claims of the two applications are in the same category but non-identical remains a grey area. There have also been obiter dictum comments in EBOA cases G1/05 and G1/06 that double patenting objections are only proper when two applications claim the same invention using identical wording. We will watch this case with interest to see if the EBOA takes Question 1 as an invitation to consider the issue of the “same subject matter” in detail and settle the issue once and for all.
1 epi Information 3/2011, pp. 100-102 (Bremi and Harrison)
Volume 50, Issue 2
2019 Ⓒ Boston Patent Law Association
Table of Contents
Letter from the BPLA President
Members on the Move
List of Officers, Board of Governors and Committees
BPLA-USPTO Panel Program Featuring Patent Examiner– Behind the Scenes Look at Patent Prosecution from Both Sides
BPLA & FCBA Program - From Boston and Beyond
Summer outing announcement
Job listings
Message from the Editor-in-Chief
Does a “Full Moon” Mean Mars too?
Biopharma IPR Trends – 2019 Mid-Year Update
Racketeering Not Just for Mobsters Anymore: Patent Proceedings Too
Community Calendar
The Annual Dinner In Honor of the Federal Judiciary
National IP Bar Associations from UK Bring Roadshow to Boston
2019 Invented Here! Awards Event
2019 Patent prosecution strategies in China
Metida Law Firm Zaboliene and Partners Annual Meeting event
Looking Forward to the 9th Annual Invented Here! 2019 Awards Event
Roundtable on Upcoming Changes in Trademark Practice in Canada
An eye on Europe: Double patenting in the spotlight
Five important changes to the Canadian Patent Act now in effect