Tuesday, May 13, 2014 T 1765/13 - Twins or clones?

Photo by Koshy Koshy obtained via Flickr.

This is an appeal against a refusal by the examining division on the ground that the parent and the divisional application may not claim the same subject-matter (no "double patenting"). 

First instance decisions of the EPO raise such objections based on the -presumed- "accepted principle in most patent systems that two patents cannot be granted to the same applicant for one invention", even though the EPC does not deal explicitly with the case of co-pending European applications of the same effective date filed by the same applicant (Guidelines (2013) G-IV, 5.4). The Guidelines also indicate that it is permissible to allow an applicant to proceed with two applications having the same description where the claims are quite distinct in scope and directed to different inventions.  The  applicant  may,  for  example,  be  interested  in  obtaining  a  first  quicker  protection  for  a  preferred embodiment and pursue the general teaching in a divisional application (see G 2/10). However, in the rare case in which there are two or more European applications from the same applicant, the  claims  of those applications have the same filing or priority date and relate to the same  invention,  the  applicant  should  be  told  that  he  must  either  amend  one  or  more  of  the  applications  in  such  a  manner  that  the subject-matter  of  the  claims  of  the  applications  is  not  identical,  or choose which one of those applications he wishes to proceed to grant. If  he  does  not  do  so,  once  one  of  the  applications  is  granted,  the  other(s) will be refused under Art. 97(2) in conjunction with Art. 125. If  the claims of those applications are merely partially overlapping, no objection should be raised (see T 877/06). (Guidelines (2013) G-IV, 5.4). In other words, cloned claim sets are not allowed -also not if worded differently-, whereas twin claim sets are allowed -look similar, but are different-.

European patent application EP 11175939.5 is a divisional application of EP 05789669.8, published as EP-A-1 730 830 (the "parent application"), now granted as EP-B-1 730 802 (the "parent patent"). A further divisional application EP 11175941.1 is pending (see T 1766/13 of 17 April 2014). All applications were filed in the name of LG Chem, Ltd., KR. They claim the same priority date of 29 March 2004 and designate the same contracting states DE, FR and GB.

The present divisional application EP 11175939.5 was refused by the examining division on the ground that the parent and the divisional application may not claim the same subject-matter (no "double patenting"). In the decision to refuse, the examining division relied in particular on G 1/05 and G 1/06 and the Guidelines C-IX, 1.6, and G-IV, 5.4.

The applicant appealed the decision. 

In his arguments, the applicant argued that the granted claims were respectively directed to a cathode active material for a secondary battery and a lithium secondary battery comprising such a cathode active material, whereas all claims now pending were directed to the use of a battery comprising the inventive cathode. The appellant submitted that the present claims could not reasonably give rise to an objection of double patenting because they related to an aspect, namely the use for a specific purpose, fundamentally different from the objects (i.e. a cathode active material per se and a lithium secondary battery per se) of the previously granted claims. The appellant argued that the test for double patenting was not whether the disclosed subject-matters in the parent and divisional applications were the same, but whether the claims of the two cases were "for the same subject-matter". These arguments were consistent with the case law of G 1/05 and G 1/06.

The appellant requested that the decision under appeal be set aside and that a patent be granted on the basis of the use-claims 1 to 4, correspondingly amended description pages, and drawing pages as originally filed.


Reasons for the Decision

2. Double patenting

2.1 The decision of refusal was based solely on the ground that an unallowable "double patenting" existed having regard to claims 1 and 5 of the granted parent patent EP-B-1 730 802. Said claims were directed to a cathode active material for a secondary battery and a lithium secondary battery comprising such a cathode active material, respectively (see point II of this decision).

2.2 In contrast, new claim 1 and dependent claims 2 to 4 are use claims. Thus present claim 1 is directed to the use of a lithium secondary battery, comprising the specific cathode of the invention, as a high-power, large-capacity power source in an electric or hybrid vehicle, whereas the granted claims of the parent application relate to products, namely a cathode active material and a lithium secondary battery. Thus the use claims of the present divisional application relate to a subject-matter different from the subject-matters of the granted claims of EP-B-1 730 802.
The present use claims are also distinct from the claims directed to a method for fabricating a lithium manganese-metal composite cathode, claimed in co-pending application EP 11 175 941.1 and found allowable in appeal case T 1766/13 (of 17 April 2014).

2.3 The Enlarged Board of Appeal observed in G 1/05 (OJ EPO 2008, 271, Reasons 13.4) and G 1/06 (OJ EPO 2008, 307): "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. Therefore, the Enlarged Board finds nothing objectionable in the established practice of the EPO that amendments to a divisional application are objected to and refused when the amended divisional application claims the same subject-matter as a pending parent application or a granted parent patent" [emphasis added RvW].
Evidently, with respect to the present case, a product and its use are not "the same subject-matter" in the sense of G 1/05 and G 1/06. The same is true for the use of a product and a method of fabricating it.

2.4 This is consistent with the Guidelines, C-IX 1.6, instructing as follows: "The parent and divisional applications may not claim the same subject-matter (see G-IV, 5.4). ... The difference between the claimed subject-matter of the two applications must be clearly distinguishable."
According to the Guidelines G-IV, 5.4, "it is permissible to allow an applicant to proceed with two applications having the same description where the claims are quite distinct in scope and directed to different inventions."
Both criteria are clearly fulfilled in the present case.

2.5 Therefore, applying the case law of the Enlarged Board of Appeal, the objection of double patenting cannot be upheld against the claims as amended. The decision under appeal therefore has to be set aside.

3. Interlocutory revision

(...)

3.2 In view of the provision of Article 109(2) EPC, the examining division is prevented from commenting as to why it did not consider the appeal well-founded and rectify its decision. It is therefore not for the board to speculate. However, as the appellant explicitly drew attention to the possibility of granting interlocutory revision in view of the amended claims (see grounds of appeal, page 3), the examining division's failure to rectify constitutes a substantial procedural violation (see T 647/93; OJ EPO 1995, 132).

3.3 According to Rule 103(1) EPC, the appeal fee is to be reimbursed in full in the event of interlocutory revision or where the board of appeal deems an appeal to be allowable, if such reimbursement is equitable by reason of a substantial procedural violation.
While pointing to the substantial procedural violation (see point 3.2), in the present case the board does not consider it equitable to reimburse the appeal fee, since neither the examination procedure leading to the contested decision nor the decision itself were tainted with procedural shortcomings. The necessity for the appellant to file an appeal arose from the decision of the examining division itself (refusal due to double patenting), not from the later incorrect handling by the examining division, i.e. not from the denial of interlocutory revision (see T 794/95 of 7 July 1997, Reasons, point 5).

4. Remittal
According to Article 11 RPBA, a board is to remit a case to the department of first instance if fundamental deficiencies are apparent in the first-instance proceedings, unless special reasons present themselves for doing otherwise.
In the present case, the occurrence of a substantial procedural violation was noted. Reasons not to remit are not apparent to the board.
As the claims have been substantially amended to the extent of creating a fresh case, which is a further argument for a remittal, and in order not to deprive the appellant of the possibility to have its case decided by two instances, the board exercises its power under Article 111(1) EPC to remit the case to the examining division for further prosecution.

(...)

Order
For these reasons it is decided that:
1. The decision under appeal is set aside.

2. The case is remitted to the department of first instance for further prosecution.

This decision has European Case Law Identifier:  ECLI:EP:BA:2014:T176513.20140424. The whole decision can be found here. The file wrapper can be found here.

Another recent decision -T 1780/12- discusses (lack of) double patenting objections between Swiss-type claims and second medical use claims. See especially Reasons 16-25 of T 1780/12.