Most recently, the EPO published the written decision of the Enlarged Board of Appeals in the case G4/19 in which the Enlarged Board dismissed any doubts about the applicability of Art. 125 EPC on the prohibition of double patenting.
The appeal leading to the Enlarged Board’s decision was filed against the decision of the Examination Division to refuse the application because of a violation of Art. 125 EPC, in particular the prohibition of double patenting. The appellant applicant argued in its appeal that the prohibition of double patenting did not apply in a situation of internal priority. In contrary there existed a legitimate interest in the grant of another patent, in particular in view of the longer term of protection available to an applicant as a result of claiming an internal priority.
The prohibition of double patenting is not explicitly mentioned in the EPC. However, immersing itself in the EPC’s history of origins the Enlarged Board of Appeals found that the competent legislator established that the prohibition of double patenting was a generally recognized principle in the EPC member states and was furthermore falling under Art. 125 EPC as a matter of interpretation of the law, thereby obligating the EPO to apply this principle.
Contrary to the appellants allegations, the Enlarged Board concluded that the prohibition of double patenting not only applies to applications of the same applicant, claiming the same subject-matter and sharing the same application date. It further decided that an application can also be refused in case of a constellation of one or more applications claiming the same priority and one of these applications was already granted as a European patent.
Our patent experts are highly experienced in optimizing the scope of protection of patent families, in particular regarding to the now manifested prohibition of double patenting and are be pleased to assist our clients in finding the optimum patent protection strategy.