EPO – The scope of application of the prohibition of double patenting

Posted: August 8th, 2018

EPO, Technical Board of Appeal 3.3.01, decision of September 5, 2017 in case T 2563/11 – Double patenting

The application in suit had been refused because the set of claims contained 2 claims which were identical to 2 claims contained in the patent granted on its parent application.

The applicant submitted that the Examining Division had required to delete certain passages in the description of the parent application. As a consequence, a certain feature was defined in the description of the parent application in structural terms whereas the description of the application in suit contained a functional definition which resulted in a broader interpretation.

The Board concludes that the principle of the prohibition of double patenting applies. Referring to the decisions of the Enlarged Board of Appeal G 1/05 and G 1/06 (OJ EPO 2008, 271 and 307) and to the Travaux Préparatoires to the EPC, the Board states that the prohibition of double patenting is an established principle in the practice of the EPO which is justified by the generally recognized principle of procedural law that the applicant has to have a legitimate interest in the protection requested. For the examination whether there is a case of double patenting, the relevant question is whether the same subject-matter is claimed.

In accordance with Article 84 EPC, the claimed subject-matter is defined by the category of the claim and its technical features. The Enlarged Board of Appeal and the Guidelines for Examination refer in the present context only to invention as claimed but not to the scope of protection which is to be determined in accordance with Article 69 EPC. Whereas the Board does not categorically exclude that there might be a situation in which the applicant has a legitimate interest in having a second patent granted for the same claimed subject-matter, the Board cannot recognize such an interest in the case at hand. Acknowledging that the description and the drawings have to be identical for applying the prohibition of double patenting would make this principle meaningless.

A copy of the decision (in German) can be read here.

Reported by: Dr. Rudolf Teschemacher

One Response

  1. Attentive Observer says:

    A very logical decision. The applicant himself should not have accepted the amendments carried out by the examining division.

    On the one hand, it is a classical move to go for a limited patent with the parent, and to file a divisional broader in scope. But the claims should be different between the parent and the divisional.

    The applicant is free to accept or not amendments carried out by the examining division in the Druckexemplar annexed to the communication under R 71(3). Once he has accepted it, he is bound by it. See also T 506/16, where the applicant accepted the grant of a patent in which the Druckexemplar annexed to the communication under R 71(3) was incomplete.

    On the other hand, there is a clear tendency by examining divisions to amend the description, but also the claims, in an attempt to twist the arm of the applicant and thereby getting read of the case. This should be resisted. The interest of the examiner in quickly obtaining his points is not the same as that of the applicant.

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