An EPO Board of Appeal has referred the question of double-patenting to the Enlarged Board of Appeal (EBA).





The issue of double-patenting has been considered before by the EBA, in

Seeing double

By contrast, the TBA found in

In a welcome move, the technical board of appeal (TBA, 3.3.01) in

have now referred the following questions to the Enlarged Board:

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



EP2429542. The application was rejected on the grounds that the claims covered subject matter 100% identical with the granted priority application ( The appealed decision was a rejection from the Examining Division of applicationThe application was rejected on the grounds that the claims covered subject matter 100% identical with the granted priority application ( EP09159932 ) and the reasoning of

.





"1. In view of the fact that there is no principle of law generally recognized in Contracting States for refusing a patent application for double patenting, refusal of a European patent application for double patenting can not be based on Article 125 EPC





2. If double patenting arises from internal priority, the applicant has a legitimate interest in the grant of the subsequent application claiming priority from an already granted European application with identical claims and identical Designated Contracting States in view of the fact that the filing date and not the priority date is the relevant date for calculating the 20-year term of the patent."





The TBA decision (T0318/14) has not yet been issued but the minutes of the oral proceedings can be found here . The

IPKat will bring you further commentary as the case progresses.