Double Patenting at the EPO

New Rule 36 sets a deadline for filing European Divisional Applications (see front cover). In view of this imminent change, we anticipate receiving instructions to file divisionals as a matter of urgency, and in many instances there may not be time for a thorough analysis of the content of the application vis-à-vis the prior art. In many cases there may be considerable overlap with what is claimed in the parent. The EPO’s attitude to double patenting is therefore already under close scrutiny.

Recent case law confirms that patents granted on parent and divisional applications cannot contain claims of identical scope, and potentially restricts the ability to claim subject matter in a divisional European patent application that is wholly encompassed within, or wholly encompasses, the claims of its parent.

The EPC has no express provisions prohibiting double patenting, but according to the Enlarged Board of Appeal in Decision G01/05 of 28 June 2007, “the principle of prohibition of double patenting exists on the basis that an applicant has no legitimate interest in proceedings leading to the grant of a second patent for the same subject matter if he already possesses one granted patent therefor.

More recently, in Decision T 0307/03, the Board of Appeal found basis for the prohibition in Article 60 EPC which states “The right to a European patent shall belong to the inventor or his successor in title”. From this the Board concludesthat the inventor (or  his successor in title) has a right to the grant of one and only one patent from the European Patent Office for a particular invention as defined in a particular claim, and once a patent has been granted to the inventor (or his successor in title) this right to a patent has been “exhausted”. The decision is open to severe criticism. (See, for example,commentary by Derk Visser, Mitt. Heft 5/2009 pp 228-230). Its basis is very unsound. It compares poorly with US statutory double- atenting based on 35 USC 101 that says “whoever invents . . . shall have a patent” and it does not take into account the positive decision by the drafters of the legislation not to include a double patenting provision (Travaux Préparatoires 1969, BR/7 e/69, p. 8 point 17).

Readers can find a more complete discussion of the case and the subject of double patenting on our website.

A Maverick Decision?

Decision T307/03 came out in 2007 amid a drive within the EPO to clamp down on the freedom to use the divisional procedures afforded by the EPC. This was in part triggered by the Enlarged Board of Appeal comments in Decisions G001/05 and G001/06 earlier that year, and led to the President submitting draft amendments to Rule 36 the following year. In submitting those rule changes the President wrote “there is a trend for divisional applications to be used to ‘duplicate’ proceedings . . . , and for applicants to pursue the divisional application instead of ‘the more proper course’ of appealing a subsequent negative decision [in the parent application]”. The President perceived problems in terms of duplication of work at the EPO and legal uncertainty for third parties. All these issues arise in the double patenting situation in T307/03.

The Board in T307/03 could have resolved these perceived problems by simply deferring any decision pending the outcome of appeal proceedings in the parent patent. Instead they chose a different route. The decision may be viewed as an aberration, but pending further decisions we must live with the possibility of it being accepted more widely.

At least one Examiner has confirmed to us that there is no change of policy in the Examining Divisions and that, in line with earlier Decision T587/98, policy continues to be very “applicant friendly”.

Comment

It is worth noting that the Board in T587/98 explicitly refused to concern itself with whether the difference between claims of the parent patent and divisional application amounted to an obvious variant, saying it would appear invidious to make a distinction between copending applications in an Article 54(3) EPC relationship and divisional applications in this respect. That decision explains why it concerns itself only with whether there is a difference between the inventions (in the nature of a “novelty test”). Provided there is such a difference, it did not matter whether it has independent inventiveness or solves a different problem. That issue is once again in the forefront.

Although the Guidelines stand up to scrutiny in the light of the new case law, and Decision T587/98 is now in doubt (the Board in T307/03 clearly said they were not following it), it is hoped that the public criticism of decision T307/03 will confine it to the margins. If not, a referral to the Enlarged Board may be necessary to clarify the disparity between these decisions. In the meantime, all we can do is exercise caution and try as we can to select features for divisional applications that can be said to be distinct in a meaningful way from the features of the parent application, while carefully selecting dependent claims to claim features that are believed to have independent novelty.