Double patenting prohibition under G4/19: a paper tiger?
J. Mazurelle (BE)
The opinions expressed within this article are those of the author and do not reflect the opinions or views of the TotalEnergies company and they cannot be considered legal advice.
In decision G4/19, the Enlarged Board of Appeal (EBoA) acknowledged the prohibition of double patenting under the European Patent Convention (EPC). The scope of the prohibition of double patenting is limited within the scope of the referral of G4/19. The cumulative conditions leading to double patenting prohibition are reviewed in detail in this article. It appears that a double patenting objection may be overcome by amending the set of claims to avoid a strict equivalence. The prohibition does not extend to overlapping sets of claims. Overcoming the objection can also be done via transfer of the patent application to another legal entity like an affiliate namely to have a different applicant. Finally, given the coming into force of the European patent with a unitary effect, some countries (Estonia, France and Germany) maintain up to now the possibility to keep both a national patent and a European patent with a unitary effect while do not authorize the simultaneous protection by a national patent and by a European Patent. Hence even if the EBoA clarified the situation about double patenting, it appears that some workaround is possible. Further development of the case law toward the prohibition of double patenting may be expected in the future.
In decision G4/19, the Enlarged Board of Appeal (EBoA) acknowledged the prohibition of double patenting under the European Patent Convention (EPC). The G4/19 decision addressed the question of double patenting in a narrow sense <1> focusing mainly on the legal basis in the EPC for this prohibition and concluded that a European patent application can be refused under Art. 97(2) and Art. 125 EPC if the application faces a double patenting issue. A significant part of the G4/19 decision is dedicated to the legal basis to prohibit double patenting. However, it appears interesting to consider the delimitation given in the G4/19 decision on the double patenting question in more detail. More precisely, the G4/19 decision <2> states that a European patent application can be refused under Art. 97(2) and Art. 125 EPC if it claims the same subject-matter as a European patent which has been granted to the same applicant and does not form part of the state of the art pursuant to Art. 54(2) and Art. 54(3) EPC. It appears interesting to consider the following cumulative conditions considered by the EBoA:
(i) it is a European patent application that can face a double patenting issue and be refused under Art. 97(2) and Art.125 EPC;
(ii) this European patent application should cover the same subject-matter as a European patent;
(iii) the objection can be raised only if the European patent is granted;
(iv) the European patent application and the European patent should belong to the same applicant;
(v) the European patent should not form part of the state of the art pursuant to Art. 54(2) and Art. 54(3) EPC;
Those cumulative double patenting conditions will be examined in detail in the present article.
In addition, the EBoA stated <3> that the application can be refused irrespective of whether it was filed on the same date as, or in an earlier application or a divisional application (Art. 76(1) EPC) in respect of, or claims the same priority (Art. 88 EPC) as the European patent application leading to the European patent already granted. Those additional requirements specify further condition (v) above which states that the patent should not form part of the state of the art. Altogether the EBoA delimitates the prohibition of double patenting to rather strict conditionsThe scope of the referral is also limited by the EBoA to objection of double patenting when there are overlapping and still valid designations in both the granted patent and the patent application concerned. As this particular aspect is relatively straightforward, it is not considered in detail in this article.. The present article aims to consider in detail the various conditions and also to see their limits. In the final part, other cases out of the scope of the referral will be examined.
(i) Refusal of a European patent application
The prohibition of double patenting under G4/19 applies exclusively to a European patent application <4>. In other words, the EPO shall raise double patenting objections only at the examination stage and once a European patent is already granted for the same subject matter and the same applicant. The prohibition of double patenting does not affect the already granted patent having the same subject matter.
It is unlikely that an examining division, during the examination of a European patent application, would not spot the presence of a granted European patent presenting the same subject matter as the European patent application being examined. However, in this unlikely case, a third party could file third-party observations under Art. 115 EPC raising a double patenting remark. The Guidelines <5> do not explicitly mention (yet) double patenting as a possible objection in third-party observations. It is however reasonable to consider that such third-party observations will be considered by the examining division.
In the unlikely case that two European patents are granted for the same subject matter with the same applicant, and assuming that those two patent applications are not prior art for each other, the G4/19 decision does not apply. As a third party, it is possible to file an opposition. However, it is important to keep in mind that double patenting is not a ground of opposition <6>. Indeed, an opposition based on only a double patenting objection will be considered inadmissible under Art. 100 and R. 76(2)(c) EPC <7>. Hence, at least one ground of opposition according to Art. 100 EPC must be raised in the notice of opposition to have an admissible opposition. Together with at least one ground of opposition under Art. 100 EPC, an opponent can raise a double patenting objection.
It is more likely that a double patenting issue arises in the course of opposition proceedings. Indeed, a claim request may lead to a double patenting question in case a divisional or a priority patent is already granted on the same subject matter. An opponent could try to raise a double patenting objection to have the claim request not admitted in the proceedings. However, this case is clearly out of the scope of the G4/19 decision. According to T936/04, a double patenting objection will succeed only in a clear case. Namely, there should be no doubt that the subject matter of the claim request under attack is the same as the subject matter of the granted patent.
From this first condition, it appears that the prohibition of double patenting under G4/19 limited to European patent applications applies in a rather restrictive framework.
(ii) The same subject matter
By definition, when a patent (or a patent application) claims the same subject matter as another patent (or patent application), a question of double patenting can be raised. At first sight, the question of the “same subject matter” in double patenting should not be a real issue. In fact, the EBoA did not develop what is meant by “the same subject matter” but considered that this aspect is out of the scope of the referral <1>. However, even if what is meant by double patenting is immediately understood, it is worth examining the question relating to the “same subject matter” in more detail. When two sets of claims, relating to similar subjects are compared, there are two possibilities: either a) the two sets of claims are identical or b) the two sets of claims are overlapping. Those two possibilities will be examined below.
a) Identical set of claims
When two sets of claims are identical, it is rather clear that a double patenting question arises. Only when two sets of claims are similar, word for word can such a conclusion be drawn. In the case leading to the referral to the EBoA (namely the interlocutory decision T318/14), a strict identity was observed between the claims of the granted patent and the claims of the European patent application. Consequently, the scope of the referral to the EBoA was delimited to the case where the claims of the patent applications were identical to the claims of a granted patent <8>. The EBoA did not comment on what is meant by the “same subject matter”. It is questionable if the same prohibition would arise with two sets of claims covering the same invention but with different wording, for instance with the use of synonyms. If it is assumed that there are no completely true and interchangeable synonyms, there will also be some room for argumentation.
b) overlapping set of claims
G4/19 is silent in the case of an overlapping set of claims. However, it is a common practice at the EPO to not object when a patent application presents an overlapping set of claims with a granted patent <9>. Similarly, various decisions of the Boards of Appeal considered that there is not a double patenting issue with a partially overlapping set of claims. Apart from the decision T307/03, the Boards of Appeal raise double patenting objections only when the scope the claims of the patent and the patent application are identical or when there is no doubt that both sets of claims covers the same subject matter. Indeed, the Boards of Appeal considered that there is a legitimate interest of the applicant in obtaining protection different from a patent already granted <10>.
However, an overlapping set of claims also comprises a situation where one of the sets of claims is completely encompassed in the other set of claims. A graphic representation of such a situation can be the section of a hard boiled egg: the smaller set of claims (the egg yolk) is completely encompassed in the larger set of claims (the egg white). This situation can be obtained with an almost identical set of claims with the exception that the broader set of claims presents an additional embodiment in the form of an alternative (“or claim”). For instance, one set of claims may cover a range of “10 to 20” whereas the other set of claims may cover two ranges “10 to 20 or 15 to 25” the rest being identical. It is questionable if the EPO accepts such situation, the applicant will probably have to delete the “10 to 20” range in the “or” claim. Nevertheless, if only a small difference is enough, and assuming that this difference does not imply significant modification of the scope of the protection, it seems possible to overcome the double patenting ban using small differences.
Finally, it appears possible to overcome a double patenting objection by introducing some amendments that can be minor in the claims so as to provide overlapping claims instead of strictly equivalent claims. Development of case law in this respect will certainly help to clarify more precisely the meaning of the “same subject matter”.
(iii) A granted European Patent
The double patenting prohibition applies only when there is already a granted patent. In other words, the examining division will only raise a double patenting objection when another European patent has been granted. Hence two patent applications protecting the same subject matter can co-exist until one is granted. Once there is a granted patent, the examining division will have the possibility to reject the remaining patent application. On the other side, the patent granted may be opposed and limited during opposition. In that case, it is likely that the double patenting objection will be withdrawn but that the relevant documents and arguments raised during the opposition proceeding may be raised by the examining division against the European patent application under examination.
(iv) The same applicant
Similarly, to the “same subject matter”, the EBoA did not develop what is meant by “the same applicant” but considered that it is out of the scope of the referral. The EBoA considered that this question was already treated in other decisions.
The question that arises is the case of a mother company with affiliates. In other words, will the prohibition of double patenting apply if the granted patent is owned by a mother company and the patent application is owned by one of its affiliates (or the other way around)?
Considering the reasoning applied for the use of the right of priority <11>, it can be assumed that an affiliate and a mother company will be considered as two different legal entities and, therefore, they will not be considered as the same applicant. Consequently, it might be possible to overcome the double patenting prohibition by transferring either the patent or the patent application to another affiliate. This solution is possible with large as well as small companies. Indeed, in small companies, the inventor can file one of the patent applications in its name and the other in the name of its company.
Hence, it seems possible to overcome the double patenting ban by transferring either the patent application or the patent to another legal entity. Here again, the development of the case law will help to clarify the limits of the prohibition.
(v) Not form of prior art under Art. 54(2) and Art. 54(3) EPC
The EBoA specifies that the granted patent should not be part of the prior art. Indeed, if the granted patent is part of the prior art under Art. 54(2) or Art. 54(3) EPC, there is no double patenting issue. The granted patent will destroy the novelty of the patent application and the examining division will simply refuse the patent application under Art. 97(2) EPC. The EBoA specifies in which cases a double patenting issue can arise with the granted patent not being part of the prior art. In particular, the EBoA further specifies what is meant for the patent to not be part of the prior art <3>. The following configurations are listed by the EBoA: a) the patent and the patent application were filed on the same date, or b) the patent is an earlier application or a divisional application (Art. 76(1) EPC) in respect of the patent application, or c) the patent claims the same priority (Art. 88 EPC) as the European patent application. This particular set of situations limits the scope of the referral <12>. However, within this scope, the prohibition of double patenting applies irrespective of which comes to grant first <13>. The three possibilities will be reviewed below.
a) Patent and patent application filed on the same day
In the case where the granted patent and the patent application being objected to under double patenting are filed on the same day, and they are not part of the prior art for each other. In a first scenario, an applicant files two patent applications with the same set of claims before the EPO. This situation relates undoubtedly to double patenting in its most obvious sense. Having two parallel patent applications under examination simultaneously, it is difficult to determine if one of the applications can be granted faster than the other. The EPO will probably raise double patenting objections on both applications. In a more likely second scenario, an applicant files on the same day, two patent applications having very similar descriptions and different sets of claims. During the prosecution, one of the patent applications is granted. The other patent application faces objections (like novelty or inventive step objections), and the applicant must amend the claims to a scope that is similar if not completely identical to the already granted patent.
b) Earlier application or divisional application
The ban on double patenting extends to the case of a divisional application. Namely, the EBoA prohibits a case where a divisional application presents the same set of claims as the parent application once this parent application is granted. This case is again a clear double patenting case. The case of an earlier application is also relatively similar. There is no importance that the application facing the double patenting objection is earlier than the granted patent or comes later.
c) Patent and patent application claiming the same priority
In this last section, the EBoA considered the case where either the granted patent or the patent application are linked with the same priority date. Three possibilities are encompassed in this proposition. First, the granted patent and the patent application claim the same priority date being a third patent or patent application. Second, the patent application claims the priority date of the granted patent. Third, it is the granted patent that claims the priority date of the patent application. As already mentioned, the prohibition applies irrespective of which comes to be granted first <13>.
The EBoA has listed a possible case falling under the scope of the referral <13>, but excluded listing all conceivable criteria for applying the prohibition <12>. It is however difficult to conceive another possibility where a double patenting issue arises based only on the filing date, priority or divisional applications.
(vi) Other cases out of the scope of G4/19
The scope of the referral neither included the national patent nor the Unitary Patent. It is however interesting to evaluate the situation at a national level or in view of the coming into force of the Unitary Patent.
a) Case of European patents vs. national patent
The EBoA explicitly stated that the scope of the referral was different from the situation falling under Art. 139(3) EPC (simultaneous protection by a national and a European patent) <14>. As a reminder, Art. 139(3) EPC states that “Any Contracting State may prescribe whether and on what terms an invention disclosed in both a European patent application or patent and a national application or patent having the same date of filing or, where priority is claimed, the same date of priority, may be protected simultaneously by both applications or patents.” Namely, a double patenting case implying both a European patent and a national patent is a matter of national laws. A result of a short analysis originates from the brochure published by the EPO: “National law relating to the EPC” <15> is provided here. More details are available in this brochure. There are mainly three possible casesMontenegro was not included at the time of preparation of this article. First, simultaneous protection is explicitly excluded. This is the case for the majority of countries. For most countries, namely 31 countries out of 38 countries, the national patent ceases to have an effect. Interestingly, in the case of the United Kingdom and Ireland, the national patent does not automatically cease to have an effect but “the controller may revoke the national patent”. In this particular case, there is a ban on double protection but the effect is not automatic. Second, simultaneous protection is not per se excluded. This case includes 7 countries out of 38, namely Austria, Denmark, Finland, Hungary, Iceland, Norway, and Poland. Third, there is one country where double protection of the national patent with the European patent is allowed: Portugal.
In a majority of countries, national jurisdiction forbids the cumulation of the protection issued from a national patent with a European patent.
b) Case of Unitary Patents vs national patents
In view of the future start of the UPC, it is worth considering the case of cumulative protection between a Unitary Patent with a national patent.
In the EPO brochure “National measures relating to the Unitary Patent”, the EPO published <16> an updated situation on the possibility of simultaneous protection between a Unitary Patent and a national patent. At the date of the preparation of this article, 17 countries will be covered by the Unitary Patent. Out of those 17 countries, 7 countries allow the simultaneous protection between the national patent and the Unitary PatentAustria, Denmark, Estonia, Finland, France, Germany, Sweden; 6 countries do not authorize the simultaneous protection between a national patent and a Unitary PatentBelgium, Bulgaria, Italy, Latvia, Lithuania, Netherlands; the remaining 4 countries do not exclude the simultaneous protection or are still under evaluation of the situationLuxembourg, Malta, Portugal, Slovenia. It is worth noting that Estonia, France and Germany do not authorize the simultaneous protection by a national patent and by a European Patent but authorize the simultaneous protection by a national patent and a Unitary Patent.
In decision G4/19, the EBoA defines the scope of the prohibition of double patenting and specifies the legal basis for this prohibition. Analysis of the conditions leading to a double patenting prohibition shows that there are some possibilities to play around with the prohibition as it stands. In particular, amending the claims to avoid having the same subject matter is probably the easiest way to proceed to overcome a double patenting objection. Identical sets of claims should be avoided and overlapping is accepted (at least up to now). A transfer of the patent or of the patent application to another legal entity to avoid having the same applicant to overcome the double patenting objection is also possible. Overcoming a double patenting objection seems therefore manageable. In any case, the prohibition of double patenting being confirmed by the EBoA, it can be foreseen that the case law will develop in the direction of a strict prohibition of double patenting.
<1> G4/19 reason 16
<2> G4/19 headnotes 1
<3> G4/19 headnote 2
<4> G4/19 reasons 4
<5> Guidelines for Examination in the European Patent Office E VI 3
<6> Case Law of the Boards of Appeal of the European Patent Office, 10th Edition, July 2022; part II F 5.4 and T 936/04
<7> Case Law of the Boards of Appeal of the European Patent Office, 10th Edition, July 2022; part IV C 2.2.7
<8> see point 24 of T318/14
<9> Guidelines for Examination in the European Patent Office G IV 5.2
<10> Case Law of the Boards of Appeal of the European Patent Office, 10th Edition, July 2022; part II.F.5.3
<11> see T 5/05 cited in Case Law of the Boards of Appeal of the European Patent Office, 10th Edition, July 2022; part II D 4.2
<12> G4/19 reasons 14
<13> G4/19 reasons 10
<14> G4/19 Reasons 2
<15> National law relating to the EPC part X. 21st edition, March 2022
<16> National measures relating to the Unitary Patent part III, available on www.epo.org