EPO Enlarged Board of Appeal to consider double-patenting

Double-patenting occurs when two patents are granted by a Patent Office to the same applicant for the same subject-matter.

The European Patent Office’s (EPO’s) approach to double-patenting has long been a subject of debate amongst European patent attorneys. The European Patent Convention, the treaty which provides the legal basis for the grant of European patents, does not deal explicitly with double-patenting. However, the EPO has developed an approach based on the case law of their Enlarged Board of Appeal, and this is set out in the EPO’s Guidelines for Examination.

The EPO’s current method of dealing with double-patenting is based on the principle that an applicant has no legitimate interest in the grant of a second patent for the same subject-matter if the applicant already has a first granted patent for that subject-matter. This situation can arise in three situations, (i) two applications that are filed on the same day, (ii) parent and divisional applications, or (iii) an application and its priority application.

The EPO’s Enlarged Board of Appeal will again be considering double-patenting in case number G 4/19. This relates to a patent application in the name of Société des Produits Nestlé S.A.. The application was refused during examination on the basis that claim 1 was “100% identical” to the subject-matter of European patent no. 2 251 021. The patent application which is the subject of G 4/19 claims priority from this earlier European patent (i.e. situation (iii) as mentioned in the preceding paragraph). The refusal of this patent application has now been appealed up to the EPO’s Enlarged Board of Appeal.

The decision in G 4/19 is awaited with interest, in particular the extent to which it might confirm and clarify the current EPO practice regarding double-patenting. We will provide further updates in due course.