Wednesday, 23 June 2021

G 4/19 "Double patenting" - Press Communiqué and decision

Press Communiqué of 22 June 2021 on decision G 4/19 of the Enlarged Board of Appeal was issued yesterday. The Enlarged Board held that a European patent application can be refused by reason of the prohibition on double patenting. The Press Communiqué is cited below in full (emphasis added); it gives the main conclusion and argument - reference is made to the full decision for the full reasoning and the scope of the prohibition. The full decision is also replicate below; it is noet yet available on the EPO "Recent decisions" pages, but it is available as pdf in the register (pdf). 

Press Communiqué of 22 June 2021 on decision G 4/19 of the Enlarged Board of Appeal

22 June 2021

The Enlarged Board of Appeal of the European Patent Office issued decision G 4/19 (Double patenting) today, in which it held that a European patent application can be refused by reason of the prohibition on double patenting.

Background

The Enlarged Board of Appeal is the highest judicial authority under the European Patent Convention (EPC). Its main task is to ensure the uniform application of the EPC.

The principle of the prohibition on double patenting excludes two patents being granted to the same applicant for one invention. The examining division applied this principle and refused European patent application 10718590.2 under Articles 97(2) and 125 EPC on the ground that the applicant already had a patent for the same invention.

The applicant appealed and Technical Board of Appeal 3.3.01 referred three questions on the prohibition on double patenting to the Enlarged Board of Appeal (T 318/14, OJ EPO 2020, A104). The referring board doubted that there was a legal basis for the prohibition in the EPC. In particular, the referring board did not consider Article 125 EPC suitable for that purpose.

Article 125 EPC provides:

Reference to general principles
In the absence of procedural provisions in this Convention, the European Patent Office shall take into account the principles of procedural law generally recognised in the Contracting States.

Key considerations

The Enlarged Board of Appeal interpreted Article 125 EPC in line with the principles set out in Articles 31 and 32 of the Vienna Convention on the Law of Treaties. It applied the grammatical and systematic interpretation methods and took the preparatory works of the EPC (travaux préparatoires) into account as a supplementary means of interpretation.

The Enlarged Board of Appeal held that the term "procedural provisions" in Article 125 EPC may extend to provisions requiring a substantive examination of the subject-matter claimed. It stated that the prohibition on double patenting constitutes a principle of procedural law within the meaning of Article 125 EPC and is generally recognised in the Contracting States.

The Enlarged Board further held that the prohibition on double patenting is not limited to applications directed to the same subject-matter which were filed on the same day. It also extends to parent and divisional applications, and to applications claiming the same priority. The Enlarged Board also confirmed that the prohibition only applies where the application under examination and the patent already granted have common designated Contracting States.

The Enlarged Board of Appeal answered the referred questions as follows:

1. A European patent application can be refused under Articles 97(2) and 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 Article 54(2) and (3) EPC.
2.1 The application can be refused on that legal basis, irrespective of whether it
a) was filed on the same date as, or

b) is an earlier application or a divisional application (Article 76(1) EPC) in respect of, or
c) claims the same priority (Article 88 EPC) as

the European patent application leading to the European patent already granted.
2.2 In view of the answer to Question 2.1 a separate answer is not required.
 

Contact

Nikolaus Obrovski
Jeannine Hoppe
Spokespersons of the Boards of Appeal of the European Patent Office
boa-press@epo.org

This press release is a non-binding document for media use.

Further information

Decision

Summary of facts and submissions

I. By its decision in appeal case T 0318/14 dated
7 February 2019 (OJ EPO 2020, A104) and issued in writing on
20 December 2019, Board of Appeal 3.3.01 referred the
following questions to the Enlarged Board of Appeal:

“1. Can a European patent application be refused under
Article 97(2) EPC if it claims the same subject-matter as a
European patent which was granted to the same applicant and
does not form part of the state of the art pursuant to
Article 54(2) and (3) EPC?
2.1 If the answer to the first question is yes, what are the
conditions for such a refusal, and are different conditions
to be applied depending on whether the European patent
application under examination was filed
a) on the same date as, or
b) as a European divisional application (Article 76(1) EPC)
in respect of, or
c) claiming the priority (Article 88 EPC) in respect of a
European patent application on the basis of which a European
patent was granted to the same applicant?
2.2 In particular, in the last of these cases, does an
applicant have a legitimate interest in the grant of a patent
on the (subsequent) European patent application in view of
the fact that the filing date and not the priority date is
the relevant date for calculating the term of the European
patent under Article 63(1) EPC?”

II. The appeal before the referring Board (in the following “the
Board”) was against the decision of the Examining Division
refusing European patent application No. 10718590.2 under
Article 97(2) EPC in conjunction with Article 125 EPC. The

Examining Division found that claim 1 of the sole claim
request on file was directed to subject-matter which was
identical to the subject-matter claimed in European patent
No. 2 251 021, which was granted for the European patent
application from which the application-in-suit claimed
priority. Granting a second patent on this claim was held to
be contrary to the principle of the prohibition on double
patenting (in the following also referred to as just “the
prohibition”), this being an accepted principle in most
patent systems, as stated in the Guidelines. The
applicability of the prohibition was furthermore confirmed by
an
obiter statement in the Enlarged Board of Appeal’s
decisions G 1/05 and G 1/06. The Examining Division held that
the prohibition also extended to European applications
claiming an internal priority from another European
application, and that decision T 1423/07 was not applicable
because the applicants were different in that case.

III. The appellant applicant argued in its appeal that the
prohibition did not apply in a situation of internal
priority. Decisions G 1/05 and G 1/06 related to divisional
applications, and applied only in that context. Decision
T 1423/07 recognised the existence of a legitimate interest,
namely the longer term of protection available to an
applicant as a result of claiming an internal priority. The
ne bis in idem” principle could not support the prohibition
either. Article 125 EPC was not a proper legal basis for
prohibiting double patenting, because the issue was one of
substantive law. The preparatory documents of the Convention,
in particular points 665. and 666. of the Minutes of the
Diplomatic Conference establishing the Convention, showed
that at the Diplomatic Conference there was no agreement on
this issue within the meaning of Article 31(2)(a) of the
Vienna Convention on the Law of Treaties of 23 May 1969 (in

the following VCLT). Although there might have been a
majority agreement on a prohibition, it was restricted to
applications having the same filing date. Article 139(3) EPC
could not provide a basis for the prohibition either. It
demonstrated that double patenting was an issue left entirely
to national legislation. A referral to the Enlarged Board was
warranted. During the oral proceedings before the Board, the
appellant requested as its main request the grant of a
patent, and as an auxiliary request a referral to the
Enlarged Board, for which purpose it agreed to the wording of
the questions proposed by the Board.

IV. To support its arguments, the appellant referred to several
documents from the collection of the preparatory documents of
the Convention (commonly referred to as the “
travaux
préparatoires
”). They are treated in more detail in the
Reasons of the present decision.

V. The referring decision examined those provisions of the
Convention which have so far been considered in the case law
of the boards of appeal to be a possible legal basis for the
prohibition, namely Articles 60(1), 63(1), 76(1) and 125 EPC.
The Board regarded none of them as suitable for this purpose.

VI. The Board’s doubts as to the applicability of Article 125 EPC
were based on two main lines of reasoning (Reasons, points
56. to 64.). First, the Board found that the wording and
scope of Article 125 EPC in themselves, i.e. without the
assistance of the
travaux préparatoires, could not be
construed as encompassing the principle of a prohibition on
double patenting. Following the rules of interpretation
stipulated by Articles 31 and 32 VCLT, Article 125 EPC as
interpreted under Article 31 VCLT was neither ambiguous or
obscure, nor manifestly absurd or unreasonable, and therefore

was not open to an interpretation under Article 32 VCLT which
would also take into account the legislative intent derivable
from the
travaux préparatoires. Secondly, given the lack of
agreement on the issue among all the Contracting States
during the Diplomatic Conference, an interpretation of
Article 125 EPC on the basis of a separate common agreement
of all parties or an instrument accepted by all parties
within the meaning of Article 31(2)(a) or (b) VCLT,
respectively, was not possible either.

VII. The preparatory documents relied on by the Board in
connection with this and other points in its Reasons are
treated in detail in the Reasons of the present decision.

VIII. The President of the EPO was invited to comment on the
referral, and third parties were given the opportunity to
file submissions under Articles 9 and 10 of the Rules of
Procedure of the Enlarged Board of Appeal (RPEBA). Their
submissions were forwarded to the appellant.

IX. In his comments dated 21 September 2020, the President of the
EPO submitted that the legal basis for the prohibition was
Article 125 EPC. The legislative intent to prohibit double
patenting under this article could be clearly derived from
the preparatory materials of the Convention. The existence of
this principle in the majority of the Contracting States
could be inferred from their national legislation
implementing Article 139(3) EPC. It was true that there had
been no agreement by all parties on this issue during the
Diplomatic Conference, but such an agreement was not
necessary. The majority agreement could still be taken into
account as the identifiable legislative intent, and thus as a
supplementary means of interpretation under Article 32 VCLT.
Recourse to the preparatory documents under Article 32 VCLT

was permissible for the purpose of confirming the above
interpretation of Articles 125 and 139(3) EPC. Thus the
Office’s long-standing practice of applying the prohibition
was correct, and was also supported by decisions G 1/05 and
G 1/06 of the Enlarged Board.

X. Amicus curiae submissions were filed under Article 10 RPEBA
by several professional associations, companies and private
persons. Two submissions were made anonymously. The majority
of them supported the view that there is no proper legal
basis under the Convention for a prohibition on double
patenting or thus for the practice of the Office.

XI. The appellant made no further submissions. Nor did it request
oral proceedings before the Enlarged Board. Therefore the
present decision can be issued in written proceedings without
prior oral proceedings.

Reasons for the decision

A. Admissibility of the referral
A.1 Interpretation of the referred questions

1. The essence of Question 1 is as follows: is there any legal
basis under the EPC for refusing an application on the ground
of double patenting?

2. The Board set out in detail what it understood by the term
“double patenting” (Reasons, points 17.-23.), and the
Enlarged Board reads this term in the same sense.
Nevertheless, while the basic question being asked may be put
simply, there are good reasons why the Board was justified in
wording Question 1 in a more differentiated manner, bearing
in mind that the term “double patenting” itself may not be
completely clear once isolated from the specific situations
addressed in the referral and in the relatively small body of

existing board of appeal case law. First, a distinction must
be made between the situation falling under
Article 139(3) EPC (simultaneous protection by a national and
a European patent) and double patenting in the narrow sense,
where two or more European applications are involved
(Reasons, points 19. and 21.). Secondly, the distinction
between double protection (claims with overlapping scope) and
double patenting also needs to be kept in mind (Reasons,
point 24.). The Enlarged Board notes that the term double
protection in German (“Doppelschutz”) is also used to denote
the situation governed by Article 139(3) EPC and comparable
situations of parallel protection.

3. Even if “double patenting” is immediately understood in its
narrow sense, the term alone may not be sufficient to
indicate to the reader that the issue at stake in the
referral is whether there is a legal basis in the EPC for
prohibiting double patenting. While there is case law which
deals specifically with the question of a legal basis for the
prohibition, there are also decisions which concern rather
the definition of “the same subject-matter” or “the same
applicant” in the context of double patenting. The manner in
which these elements are incorporated into the wording of
Question 1 makes it clear that these points of law are not
the subject of the present referral.

4. The referral gives no particular explanation why
Article 97(2) EPC is mentioned in Question 1. The Enlarged
Board takes it that its inclusion serves to distinguish a
refusal of a patent application following examination by the
Examining Division from other possible refusals, such as by
the Receiving Section under Article 90(5) EPC. The main focus
of the referral is on an analysis of the various provisions
of the Convention which have been put forward in the case law

as the legal source of the double patenting prohibition
(Articles 60, 63, 76, 125 EPC), and which as such may
potentially be invoked in conjunction with Article 97(2) EPC
as the legal basis for a refusal. The Board also stated that
the referral does not extend to the question whether and how
the prohibition might be applicable in opposition proceedings
(Reasons, point 31.). Thus the Enlarged Board considers that
the reference to Article 97(2) EPC makes it clear that the
referred question is restricted to (the applicability of the
prohibition during) substantive examination proceedings under
Article 94 EPC before the Examining Division.

5. Question 1 does not mention the additional condition that
both the granted and the potential European patent must have
an effect in the same territory. Given the system of
designations (Articles 66 and 79 EPC), and in particular the
possibility to withdraw individual designations
(Article 79(3) EPC), it is the Enlarged Board’s understanding
that in current Office practice an objection of double
patenting is only raised if there are overlapping and still
valid designations in both the granted patent and the
application concerned. As it is clear from the Reasons of the
referring decision that the Board was well aware of this
condition (points 29. and 30.), the Enlarged Board considers
that it is also implied in the question itself.

6. The essence of Question 2.1 is as follows: if there is a
legal basis in the EPC for the prohibition on double
patenting, are all three of the possible constellations in
which double patenting may arise to be treated in the same
manner? Common to these constellations is that the granted
patent and the application both have the same effective date
(point 18. of the Reasons).


7. Question 2.1 is to be answered only if the Enlarged Board
finds that there is a legal basis in the EPC for the double
patenting prohibition. The formulation “
… what are the
conditions for such a refusal … ?
” may appear very broad in
scope and intended to cover all possible criteria for
establishing the conditions to be met for the double
patenting prohibition to apply. For example, the referral
invites the Enlarged Board to clarify the conditions for a
“[lack of a] legitimate interest”, which G 1/05 and G 1/06
saw as a possible basis for the prohibition (Reasons,
point 13.4). It also invites the Enlarged Board to clarify
the concept of “the same invention” (Reasons, point 80.). The
amicus curiae submissions also ask for the criteria to be
applied in defining “the same applicant”. It is nevertheless
clear from the Reasons of the referring decision that the
central point of question 2.1 is really an extension of
question 1, namely whether the legal basis for the
prohibition in the EPC, if there is one, is applicable to all
three of the constellations listed, or to only one or two of
them. The Enlarged Board will limit itself to answering
question 2.1 in this sense.

8. As to question 2.2, it is clear that the Board is primarily
interested in knowing if the reason given in T 1423/07 – a
legitimate interest in a longer term of protection, having
regard to the
obiter statement of the Enlarged Board in
G 1/05 and G 1/06, Reasons, point 13.4 - may establish an
exception to the double patenting prohibition for
applications having different filing dates, but the same
priority date.

9. Questions 2.1 c) and 2.2 are also apparently restricted to
cases of internal priority, in which both applications are
European applications, with one of them serving as the

priority application for the other. However, as pointed out
in the President’s comments (point 104.), the same question
may be asked in cases where two European applications with
different filing dates claim priority from the same national
application.

10. Furthermore, Questions 2.1 b) and c) already appear to be
restricted to the (likelier) case in which the application
filed earlier, (i.e. the application establishing the
priority right, or the earlier application under Article 76
EPC - commonly referred to as the “parent application”) is
also granted first, and the examination of the subsequent
application (i.e. the application claiming priority or the
divisional application) is concluded later. However, any such
restriction would appear to be unintended, and the question
can be applied more generally to any procedurally related
pairs of applications falling under the constellations of
Question 2.1 b) and c), irrespective of which comes to grant
first.

A.2 Admissibility criteria under Article 112 EPC
11. Article 112(1) EPC provides:
“In order to ensure uniform application of the law, or if a
point of law of fundamental importance arises:
(a) the Board of Appeal shall … refer any question to the
Enlarged Board of Appeal if it considers that a decision is
required for the above purposes. …
(b) …”

12. On this basis, a referral to the Enlarged Board by a board of
appeal is admissible if there is conflicting case law in the
application of the EPC, or if a point of law of fundamental
importance arises. Notably, a point of law can be one of
fundamental importance even without any conflicting case law.

The necessity to ensure the uniform application of the law
may also arise without a high number of conflicting cases
(G 1/11, Reasons, point 1.). Finally, a ruling by the
Enlarged Board on the question must be decisive for the case
before the board (G 1/14, Reasons, point 2.).

13. Question 1 of the referral concerns not merely the correct
application of a legal provision, but whether certain
procedures carried out by the Office have a proper legal
basis. That the actions of public authorities cannot be
arbitrary but must be based on the law is considered a
fundamental principle of public law (principle of legality).
Therefore the Enlarged Board also considers the referred
question to be a point of law of fundamental importance, even
without divergent or extensive case law on the issue.
However, as the Board correctly identified, there is even
divergent case law on the question whether any proper legal
basis for a prohibition on double patenting exists at all
(Reasons, points 43. to 46.), and the main part of the
referring decision is dedicated to reviewing and analysing
decisions in which different provisions of the EPC were
identified as the possible legal basis for the prohibition,
or the lack of a legal basis was perceived.

14. Questions 2.1 and 2.2 only become relevant if Question 1 is
answered in the affirmative. They address issues which may
not immediately appear to be questions of law of fundamental
importance, but rather aspects of the application of the
principle of the prohibition on double patenting. As already
noted in point 7. above, Question 2.1 is formulated in such a
way that it may be read as seeking an answer on all
conceivable criteria for applying the prohibition. However, a
question of such sweeping scope would certainly be
inadmissible, given that the Enlarged Board has, as a matter

of principle, no powers to decide in advance on legal issues
which have not yet arisen in a case before a board of appeal.

15. In addition, the referral did not indicate that the Enlarged
Board needs to clarify all the details of the referred
questions. For example, it is not apparent that the
definition of the “same invention” is a contentious issue in
the case underlying the referral, given that the claims
refused by the Examining Division are identical to the claims
of the patent granted earlier (Reasons, point 3.).

16. For these reasons, the Enlarged Board reads Question 2.1
narrowly, and as essentially asking whether the possible
legal basis in the EPC is equally applicable to the three
identified constellations, or whether there may be reasons
for treating them differently, for example by establishing an
exception for one of them. Further questions which may arise
in connection with double patenting, such as the question of
the same invention or the same applicant, are not considered
to be covered by the referral.

17. The Enlarged Board further notes with regard to the
admissibility of Question 2.1 that the decisions cited in the
context of the more specific Question 2.2. can also be
considered to constitute conflicting case law for the purpose
of answering Question 2.1. Thus, for example, there are
decisions that view the
obiter dictum of G 1/05 and G 1/06 as
being restricted to divisional and parent applications
(T 1423/07, Reasons, point 3.), while others view it as being
more general in its scope, or at least as extending to
applications linked by priority (T 2461/10, Reasons, point
14., confirmed by T 2563/11, Reasons, point 2.5).


18. One reason for a possible exception from the prohibition is
identified in the more specific Question 2.2. For this
question, too, the Board demonstrates that conflicting
decisions exist (T 318/14, Reasons, points 65.-67.). The
question’s formulation appears to imply that the
justification for a prohibition is the principle of (the lack
of) a legitimate interest, following decisions G 1/05 and
G 1/06. Thus the Enlarged Board proceeds on the assumption
that it may only need to give a separate answer to this
question if it concludes that the constellations of Question
2.1 may be treated differently from one another and that a
prohibition on double patenting is indeed to be based on the
principle of a legitimate interest in the proceedings.

19. The Enlarged Board is satisfied that a ruling on the referred
questions (read narrowly) is necessary for the Board’s
decision on the appeal. The Enlarged Board also considers the
structuring of the questions to be appropriate. Although the
Board does not specifically say so, it can be inferred from
the referring decision that, in the Board’s own view, the
case before it could potentially be decided at either a
general level or a more specific level, depending on the
answers of the Enlarged Board. This is reflected in the
formulation of the referred questions.

20. Summing up, the Enlarged Board is satisfied that the referral
is admissible. More specifically, each of the questions is
admissible, provided that the requested clarification of the
conditions for a refusal is restricted to those which are
inseparable from the question of the legal basis for a
refusal. A reformulation of the questions is not necessary.
The observations made in points 9. and 10. above on the
constellations covered by Question 2.1b) and c) can be taken
into account in the formulation of the answers.


B. Substantive issues of the referral: Question 1.
B.1 Article 125 EPC as the suggested legal basis

21. The Board analysed several provisions of the Convention with
respect to their suitability as the proper legal basis for
the prohibition on double patenting. From the referral and
the totality of the case law it is clear that Article 125 EPC
is the most often discussed and, at least
prima facie, the
most promising one. Article 125 EPC is also given in the EPO
Guidelines for Examination as the legal basis for refusals,
and consequently was also invoked as such by the Examining
Division in the decision under appeal. It is therefore
appropriate to start with this provision.

B.1.1 Applicability of Article 125 EPC to the question of double
patenting
22. Article 125 EPC is titled “Reference to general principles”
and provides that “[i]n the absence of procedural provisions
in this Convention, the European Patent Office shall take
into account the principles of procedural law generally
recognised in the Contracting States”.

23. The first question is whether the scope of Article 125 EPC
or, more precisely, a procedural provision which is absent
from the Convention but which may be established with the
help of a principle of procedural law, may also extend to
substantive issues. In the present case it can be asked if
the missing, and as such hypothetical, provision which would
govern the matter of double patenting could be classified as
a procedural provision. Put differently, the term “procedural
provision” requires interpretation.

24. The Enlarged Board’s decision G 1/97 (OJ EPO 2000, 322) on
the interpretation of Article 125 EPC is of no assistance in

the present case. Its finding, namely that Article 125 EPC
does not permit the introduction of new procedures (Reasons,
point 3.), does not provide an answer to the question whether
the examination for double patenting may be covered by this
article. At least, this possibility is not ruled out by
G 1/97: a new procedure need not be introduced, as this
examination can take place as part of the existing procedure
for substantive examination under Article 94 EPC (see also
point 71 of the President’s comments).

25. In its review of the relevant decisions, the Board tended to
agree with the approach of those decisions that considered
double patenting to involve both procedural and substantive
issues (Reasons, point 63., referring to T 1423/07), but it
did not explain in detail its reasons for this position. It
also pointed out that early decisions expressly denied the
possibility that Article 125 EPC could regulate matters of
substantive law (Reasons, point 43., with reference to
T 587/98 (OJ EPO 200,497), Reasons, points 3.1, 3.2 and 3.5)

26. According to decision T 1423/07, double patenting also
comprises procedural aspects, a finding which it held to be
supported by the Minutes of the Munich Diplomatic Conference
for the setting up of a European System for the Grant of
Patents (in the following cited as R3), point 665. This
source – in the reading of the deciding board – “
confirm[s]
the procedural aspects of double patenting
”. From this the
deciding board concluded that the refusal of a European
application for double patenting comprised procedural aspects
as well as matters of substantive law, so that Article 125
EPC was applicable. T 1423/07 also concluded that, while some
Contracting States applied the prohibition, it could not be
shown to be generally recognised in the specific context of
the pre-grant stage (Reasons, points 2.2.1 and 2.2.2).


27. The Enlarged Board also considers that a provision falling
under Article 125 EPC may well cover issues which touch upon
substantive matters, such as the scope of claimed subjectmatter. This interpretation can be based on the Convention
itself, without reference to the preparatory documents. Thus
it is not ruled out that some issues which may be considered
“substantive” are to be decided on the basis of a principle
of procedural law.

28. It is settled case law of the Enlarged Board of Appeal that,
even though the VCLT is not formally binding on the boards of
appeal, it provides an appropriate source of international
law for interpreting the Convention. This was also recognised
by the referring decision in its application of Articles 31
and 32 VCLT.

29. These articles are in Part III, Section 3, VCLT (titled
“Interpretation of Treaties”) and are worded as follows (with
non-relevant parts omitted):

Article 31 VCLT – General rule of interpretation

1. A treaty shall be interpreted in good faith in accordance
with the ordinary meaning to be given to the terms of the
treaty in their context and in the light of its object and
purpose.
2. The context for the purpose of the interpretation of a
treaty shall comprise, in addition to the text, including its
preamble and annexes:
(a) any agreement relating to the treaty which was made
between all the parties in connection with the conclusion of
the treaty;

(b) any instrument which was made by one or more parties in
connection with the conclusion of the treaty and accepted by
the other parties as an instrument related to the treaty.
(3)…
(4)…

 

Article 32 VCLT – Supplementary means of interpretation

Recourse may be had to supplementary means of interpretation,
including the preparatory work of the treaty and the
circumstances of its conclusion, in order to confirm the
meaning resulting from the application of article 31, or to
determine the meaning when the interpretation according to
article 31:
(a) leaves the meaning ambiguous or obscure; or
(b) leads to a result which is manifestly absurd or
unreasonable.

30. In view of Article 177 EPC, which provides that the three
texts of the Convention, in English, French and German, are
equally authentic, it is furthermore appropriate to point to
Article 33 VCLT, which also belongs to Part III, Section 3:

Article 33 VCLT – Interpretation of treaties authenticated in
two or more languages

1. When a treaty has been authenticated in two or more
languages, the text is equally authoritative in each
language, unless the treaty provides or the parties agree
that, in case of divergence, a particular text shall prevail.
2. …
3. The terms of the treaty are presumed to have the same
meaning in each authentic text.
4. …


31. Normally, the systematic interpretation is the next method to
be applied if, as a result of the grammatical (literal)
interpretation, the ordinary meaning of a term remains
insufficiently clear. The same principle is expressed in
Article 31(1) and (2) VCLT by the statement that the terms of
the treaty are to be interpreted in their context, the
primary context being the text of the treaty itself.

32. Article 125 EPC is in Chapter I of Part VII of the Convention
(Common Provisions). This chapter is titled “Common
provisions governing procedure”. The term “common” refers to
Parts IV to VI, i.e. the grant, opposition and appeal
procedures. These parts themselves are also devoted to
procedural provisions, and most articles in the common
provisions of Chapter I of Part VII are clearly of a
procedural nature, in the sense that they do not touch on the
substantive provisions of Part II of the Convention, in
particular the provisions of Chapter I of Part II
(Articles 52 to 57 EPC).

33. Thus it can be acknowledged that the provisions of Chapter I
of Part VII are procedural in nature. The Enlarged Board is
of the opinion that the minimal difference between the term
“procedural provisions” in Article 125 EPC of Chapter I of
Part VII and the wording “provisions governing procedure” in
the Chapter’s title is not intended to make a material
distinction.
The same applies to the German wording:
“Vorschriften über das Verfahren” (Article 125 EPC) and
“Vorschriften für das Verfahren” (Chapter I title).
In the
French version, the term “disposition[s] de procédure”
appears in both Article 125 EPC and the title of Chapter I.
On this basis, both the wording of Article 125 EPC and its
position in the Convention indicate that it concerns

procedural provisions comparable to the preceding articles in
this chapter.

34. However, Chapter I also contains Articles 123(2) and (3) EPC,
which are applied daily in the Office, with the former also
serving as a legal basis for a refusal under
Article 97(2) EPC. Therefore, from a formal point of view,
Articles 123(2) and (3) EPC are procedural provisions. On the
other hand, they cannot be perceived as being purely
procedural, because they require the subject-matter of the
claim to be determined when they are applied in the course of
examination or opposition proceedings. Notably, in G 1/05 and
G 1/06 the Enlarged Board held compliance with
Article 123(2) EPC to be a substantive requirement, to be
examined by the Examining Division (Reasons, point 3.3).

35. The above demonstrates that in the system of the EPC, the
term “procedural provision” may well extend to provisions
requiring a substantive examination of the subject-matter
claimed. More particularly, provisions in Chapter I of Part
VII may allow the refusal of a patent application under
Article 97(2) EPC for reasons other than non-compliance with
the substantive patentability requirements of Chapter I of

Part II of the Convention (Articles 52 to 57 EPC).
36. Thus the Enlarged Board concludes that, from a purely
systematic point of view, Article 125 EPC may provide a legal
basis for the regulation of double patenting - whether this
means permitting or prohibiting it - even though a
consideration of substantive issues such as “the same
subject-matter” may be involved as well.


B.1.2 Prohibition of or permission for double patenting as a
generally recognised principle of procedural law in the
practice of the Contracting States
37. Since it has been concluded that Article 125 EPC may serve as
the legal basis for a prohibition on double patenting, the
next question is whether such a principle exists and is
generally recognised in the Contracting States.

38. The Enlarged Board is not aware of any reliable source which
would directly confirm this proposition as a fact. The
sources cited in the referring decision (Reasons, point 60.)
or in the comments of the President of the EPO, e.g. the
regularly updated compilations by the EPO of the relevant
provisions of national law (cited as N5 in the referring
decision), only document the practice of the Contracting
States concerning the implementation of Article 139(3) EPC,
but cannot provide direct information about their practice on
double patenting in the narrow sense, i.e. about the
possibility of granting two national patents, analogously to
double patenting in the context of European patents only, as
explained in point 2. above. It appears that the Office can
do no more than infer from the general practice on the
interpretation of Article 139(3) EPC that the double
patenting prohibition is also a generally recognised
principle (points 80. and 81. of the President’s comments).
The above-cited facts are certainly consistent with the
assumption that the prohibition on double patenting in the
narrow sense is also recognised and applied in the majority
of the Contracting States. Still, it remains the case that
there are no data available to the Enlarged Board which would
allow it to safely establish the practice in all or at least
the majority of the Contracting States and therefore to
confirm the applicability of the prohibition under Article
125 EPC on that basis.


B.1.3 The prohibition as an embodiment of the principle of a
legitimate interest in the proceedings (implications of
G 1/05 and G 1/06)
39. The President of the EPO submitted that the obiter dictum of
the Enlarged Board in G 1/05 and G 1/06 approved the practice
of the Office. The EPO Guidelines for Examination in their
present version (March 2021) also refer to those decisions in
connection with double patenting, see Guidelines, G-IV 5.4.
Although that particular part of the Guidelines is not quoted
in point 93. of the President’s comments, at point 94. G 1/05
and G 1/06 seem to be associated with the proposition that
the necessity of having a legitimate interest in the
proceedings is a generally recognised principle of procedural
law in the Contracting States. However, in those decisions
the Enlarged Board did not explain in what way the
prohibition on double patenting should be derived from the
principle of a legitimate interest. This is understandable,
given that G 1/05 and G1/06 were not directed to this
specific question. The Enlarged Board furthermore did not
seem to be relying on Article 125 EPC when it stated its
acceptance that the “
principle of prohibition exists on the
basis of the lack of legitimate interest in the proceedings
leading to a second patent
” and concluded from this that the
practice of the EPO was not objectionable (G 1/05 and G 1/06,
Reasons, point 3.14). Nor was there even a statement by the
Enlarged Board that it regarded a legitimate interest in the
proceedings to be a generally recognised principle of
procedural law, which might have allowed the inference that
Article 125 EPC should apply. In fact, the only firm
conclusion which may be drawn from the Enlarged Board’s
obiter remarks in G 1/05 and G 1/06 is that the lack of a
legitimate interest may provide an explanation for the
prohibition.


40. Furthermore, the Enlarged Board’s statement in the Reasons,
point 13.4, that it “accepts” the existence of the
prohibition and that the practice of the Office did not
appear objectionable must be seen in context, in particular
that of point 13.5 of the Reasons. There the Enlarged Board
explained, with reference to the submissions of the President
of the EPO (point VIII(d). in G 1/05 and G 1/06) that
recognising the prohibition could not prevent applicants from
keeping a series of divisional applications pending while
containing the same subject-matter. The conclusion reached by
the Enlarged Board in point 13.5 would have applied
a
fortiori
if the Office had not applied the prohibition. Thus
the Enlarged Board had no reason to question the Office’s
practice, because confirming it was not required for the
purposes of its own decision. Nor was the practice of the
Office called into question in the case law at that time,
even by decision T 587/98 (
supra), which was cited by the
referring decision (Reasons, point 43.) as questioning the
applicability of Article 125 EPC to questions of substantive
law. In fact, T 587/98 carefully restricted its findings to
the question of a broader claim wholly encompassing a
narrower claim in cases of divisional applications (Headnote
and Reasons, point 3.7), but it did not go so far as to cast
doubt on the general principle of a prohibition on double
patenting.

41. Accordingly, unreservedly approving the double patenting
prohibition on the basis of the
obiter dictum in G 1/05 and
G 1/06 would not be appropriate for the purpose of the
present referral.

42. In sum, from the foregoing (points 38. to 41.) alone, the
Enlarged Board is unable to conclude that the prohibition on
double patenting is a principle generally recognised in the

Contracting States. It is therefore necessary to have
recourse to other sources.

B.2 Recourse to the preparatory documents of the Convention (the
travaux préparatoires”)
43. The referring decision discussed whether the provisions of
the VCLT could justify turning to the preparatory documents
of the EPC for guidance. The Board held that under Article 32
in conjunction with Article 31 VCLT it was not possible to do
so for the present case. This appears to have been because it
found that neither condition of Article 32 VCLT was
fulfilled. That is, for the issue of double patenting, an
interpretation of the Convention, here Article 125 EPC, using
the rules of interpretation laid down in Article 31 VCLT did
not (a) leave its meaning ambiguous or obscure, or (b) lead
to an obviously nonsensical (i.e. absurd) or unreasonable
result (Reasons, point 59.). At least, no other conclusion
can be drawn from the Board’s statements there that “
[t]he
majority opinion set out in point 665 of document M/PR/I
cannot be relied on … as a supplementary means of
interpretation
” and that “neither of these alternatives
[conditions (a) and (b) of Article 32 of the Vienna
Convention] applies to the point of law under consideration
”.

44. The EBA concurs with the Board’s findings with respect to
condition (b): as is clear from the whole context of the
underlying case, the EPC may permit or it may prohibit double
patenting. Neither possibility is obviously nonsensical or
unreasonable. Granting two or more patents on the same
invention to the same applicant may appear highly
undesirable, but it is difficult to view it as outright
nonsensical or clearly unreasonable. With regard to the other
option, i.e. the
status quo as set out in the Guidelines for
Examination, it has never been argued that the practice of
the Office is obviously nonsensical or unreasonable, but

simply that it lacks a proper legal basis. It has never been
argued either that the existing practice is in any way
manifestly unjust. Thus the Enlarged Board agrees that
condition (b) is not applicable.

45. However, it is difficult to see why the ordinary means of
interpretation pursuant to Article 31 VCLT do not leave the
meaning of the Convention ambiguous or even obscure with
respect to double patenting. It is clear from the referral
that over thirty years of case law have not been able to
settle the issue. The ambiguity of the Convention with
respect to the question of double patenting is also
implicitly confirmed by those decisions that have dealt with
the questions of the same applicant or the same invention
(see e.g. T 1391/07, Reasons, point 2.5, T 1780/12, Reasons,
points 8.-10., T 879/12, Reasons, point 13., and the further
decisions cited there). The fact that these questions were
examined indicates that the deciding boards could not have
been fully convinced that there is no prohibition on double
patenting under the EPC. Had they been convinced, it would
not have been proper for them to decide on the questions of
the same invention and the same applicant, as these questions
would have been irrelevant.

46. The Enlarged Board does not endorse the opinion that the
interpretation of the Convention (in itself) provides a clear
answer. It rather takes the view that Article 125 EPC is
worded in such general terms that, for this reason alone, its
potential scope can be considered to be ambiguous. As
explained in point 36. above, based on a systematic
interpretation, the regulation of double patenting does not
seem to be excluded from the scope of Article 125 EPC. Thus
the Convention is not clear, but rather silent on this issue.
The result of a systematic interpretation may still require

confirmation. Accordingly, it is not at all apparent why
supplementary means of interpretation, and in particular the
preparatory documents of the EPC, cannot or should not be
used in order to determine the position under the Convention
or the meaning of Article 125 EPC with regard to double
patenting. On the contrary, there are good reasons, including
on the basis of Article 32 VCLT, for consulting the
travaux
préparatoires
. Indeed, as the cited cases show, in the past
both the boards and the Enlarged Board have turned to the
travaux préparatoires as a matter of course for assistance in
interpreting Article 125 EPC.

B.2.1 Double patenting in light of the travaux préparatoires
47. In the following, reference will be made to certain documents
among the preparatory documents of the Convention. The
references used are listed below. They replace the usual full
references for the sake of brevity, and also the numbering N1
to N4 used by the appellant and in the referring decision
because parts of the
travaux préparatoires that were not
included in the extracts filed by the appellant will also be
referred to.

R1: A collection of the comments by the participating
governments and other bodies on the draft provisions of the
future Patent Convention, as established by the 6th meeting
of the Inter-Governmental Conference for the setting up of a
European System for the Grant of Patents, held in Luxembourg
from 19 to 30 June 1972 (in short: the 6th Meeting). The
comments are listed as “M9 to M29” in the documentation
maintained by the European Patent Office on the
travaux
préparatoires
. R1 also contains the extract filed as N2 in
the referral proceedings.


R2: The Minutes of the 6th meeting of the Inter-Governmental
Conference, listed by the EPO as BR/219 e/72. It contains N4.

R3: The Minutes of the Diplomatic Conference, titled “Minutes
MDC 1973” in the EPO documentation (English version). It
contains N1.

R4: The Minutes of the 10th meeting of Working Party I of the
Inter-Governmental Conference, listed by the EPO as
BR/144 e/71. It contains N3.

M/34: The Draft Rules of Procedure of the Diplomatic
Conference. The reference used by the EPO is maintained. It
is to be noted that this Draft was adopted without amendments
and became the final Rules of Procedure, see R3, point 10,
page 13.

These documents are also accessible to the public via the
website of the EPO (see
https://www.epo.org/lawpractice/legal-texts/epc/archive/epc-
1973/traveaux/documents.html
, at the time of writing).

48. It appears undisputed that the last recorded statement on the
present issue of the competent legislator, the Diplomatic
Conference, is the agreement in point 665. of R3. The
significance of this agreement must be evaluated in light of
the legislative work done both at and before the Diplomatic
Conference. Before looking at the preparatory work of the
Convention dating back even earlier, for the purpose of
answering Question 1 it is sufficient to start with the 6th

Meeting.
49. By the time of the 6th and final Meeting in June 1972,
Article 125 already had its present wording and numbering,

and consequently was also part of the Draft Convention after
the closure of the Inter-Governmental Conference following
the 6th Meeting. It was clear that the documents adopted by
the Inter-Governmental Conference would form the basis of the
work of the planned Diplomatic Conference (R1, Introduction,
point 4, last paragraph).

B.2.1.1 Minutes of the 6th Meeting (R2)
50. As acknowledged in the referring decision, a common
understanding was already reached during the discussions on
Article 125 at the 6th meeting that double patenting was not
possible (Reasons, point 56., referring to N4). This common
understanding was recorded in R2 under point 49. The exact
wording is as follows:

Article 125
49. During discussion of this Article the Conference
established that the European Patent Office may not grant
more than one European patent to the same person for the same
invention being the subject of applications filed on the same
date.
The Conference also established that the European Patent
Office is entitled to correct any slips which it may make.


Apart from these two issues (i.e. the double patenting
prohibition and error correction
ex officio), no further
details are recorded in R2 of the discussions concerning
Article 125.

51. The participating governments and bodies were invited to
submit comments on the drafts, including the Draft Convention
(R1, Introduction, points 4 and 6). Comments that were
received before 15 May 1973 were published by the German
Government in preparation for the Diplomatic Conference (R1,

Introduction, point 6). Comments on Article 125 by two
participating governments are known to the Enlarged Board.
B.2.1.2 M/28, Comments by the Norwegian Government in R1
52. Norway took part in the Inter-Governmental Conference from
the beginning (R1, Introduction, point 2) and submitted
comments. The complete submission of the Norwegian Government
in M/28 is on pages 341-349 of R1; it was received by the
Secretariat on 5 May 1973. The comment on Article 125 is in
point 11 of M/28 (R1, page 346). The English version is
worded as follows:
In connection with Art. 125 the sixth meeting of the InterGovernmental Conference “established that the European Patent
Office may not grant more than one European patent to the
same person for the same invention being the subject of
applications filed on the same date” (Minutes par. 49).
However, in the Norwegian opinion, it follows from Art. 52(3)
that applications filed on the same day do not at all
constitute novelty hindrance against each other and that an
applicant may thus without detriment to himself file several
applications on the same day. Under the circumstances, a
possible restriction as established at the sixth meeting
should be expressly stated in the Convention.


B.2.1.3 M/10, Comments by the UK Government in R1
53. The tabular summary compiled by the Secretariat of the
Diplomatic Conference of the comments contained in R1 (pages
12-14) only mentions Norway as submitting comments in the
context of Article 125 (R1, page 13, right-hand column, at
the bottom). In fact, the comments of the UK Government also
address the issue of double patenting in the same context.
Reference is made to document M/10 (pages 41 to 49 in R1).
These comments of the UK delegation in M/10 were not included

under Article 125 in the tabular summary in R1, given that
Article 125 was not mentioned. M/10 was submitted to the
Secretariat earlier than M/28, on 29 March 1973.

54. M/10, point 2, is titled “GENERAL” and contains the
following:
We would prefer the understandings recorded under paragraph
49 of the minutes of the Conference in June 1972 to be
mentioned also in the records of the Diplomatic Conference.

This point in M/10 apparently refers to point 49 of R2 (see
point 50. above).

B.2.1.4 Minutes of the Diplomatic Conference (R3), point 665.
55. The work of the Diplomatic Conference was regulated by the
Rules of Procedure (M/34). These were adopted unanimously at
the beginning of the Conference (R3, point 10, page 13). The
Rules specified the organs of the Conference: the Plenary,
various Committees, Working Parties and Rapporteurs (M/34,
Rules 3(2) to 3(4)). The Main Committees had to establish the
draft texts, for submission to the Committee of the Whole
(M/34, Rule 12(5)). The Committee of the Whole had to adopt
the texts for submission to the Plenary (M/34, Rules 3(2) and
36(2)). Main Committee I was tasked with examining Part VII
of the Draft Convention (M/34, Rule 12(2)), including Article
125. All government delegations were entitled to participate
in all three Main Committees and in the Committee of the
Whole (M/34, Rules 12(6) and 14(2)). The decisions of the
various organs required a qualified (two-thirds) or simple
majority of the votes, abstaining delegations being
considered as not voting (M/34, Rules 36 and 37). Decisions
in the Main Committees and Working Parties required a simple

majority (except for reconsideration of proposals under
Rule 34).

56. Article 125 is dealt with in the Minutes of the Proceedings
of Main Committee I, points 665. to 669., with points 665. to
668. being dedicated to the issue of double patenting, while
point 669. records the unanimous opinion that the EPO may
correct inadvertent errors. Point 665. is worded as follows
in the English version:

In connection with Article 125, it was established at the
request of the United Kingdom delegation that there was
majority agreement in the Main Committee on the following:
that it was a generally recognised principle of procedural
law in the Contracting States that a person can be granted
only one European patent for the same invention in respect of
which there are several applications with the same date of
filing.


57. On closer scrutiny, the statement as recorded in the English
version “it was established … that it
was a principle in
the Contracting States
that … only one European patent [can
be granted] …” (emphasis by the Enlarged Board) appears
somewhat puzzling. A comparison with the German and French
versions (see point 58. below) shows that it may be a
mistranslation. An alternative explanation could be that the
original English text put to the vote first mentioned the
granting of only one (national) patent as the recognised
principle of procedural law, from which it followed that no
more than one European patent should be granted for the same
invention, but that this was then shortened and thus
erroneously redacted for the English version of the minutes.

 

58. Either way, the proper interpretation of this statement is
rather that it “…
followed from the … principles of
procedural law in the Contracting States that only one

European patent [can be granted]…”. This is clear from the
corresponding German version of the minutes (“BerichteMUCDK” in the EPO documentation): “… Aus den allgemein anerkannten
Grundsätzen des Verfahrensrechts der Vertragsstaaten
ergibt
sich
, dass … ”. The French version (“M-PR” in the EPO
documentation) conveys the same: “
… il découle des principes
de procédure généralement admis dans les Etats contractants
qu'il …
”.

59. It is also apparent that the UK motion recorded in point 665.
of R3 is the direct consequence of the UK’s comment in M/10.
The Enlarged Board is not aware that this issue is treated
anywhere else in the Minutes of the Diplomatic Conference.
The only fact derivable from the wording of points 665. and
666. (the latter is discussed below) is that the majority
position was established and recorded. This majority
agreement appears to have been established without preceding
debate, as no discussion is recorded or even hinted at. This
may also be concluded from the fact that FICPI’s question and
the UK’s response on the definition of the “same invention”
were recorded in detail (points 667. and 668. of R3). The
referring decision noted that the issue was no longer
mentioned by the Rapporteur of Main Committee I in his report
to the Committee of the Whole (Reasons, point 58.).

B.2.1.5 Minutes of the Diplomatic Conference (R3), point 666.
60. According to the minutes, the Norwegian delegation made a
statement after the vote on the agreement referred to in
point 665. Point 666. records the statement as follows:
The Norwegian delegation stated that it could not agree to
this principle in its present general form since under

Scandinavian law it was possible in theory to grant two
patents to an applicant for the same invention.


61. This statement is compatible with the fact that the agreement
recorded in point 665. was a majority agreement. Otherwise,
as mentioned above, there is no indication in the minutes or
elsewhere in the
travaux préparatoires that either double
patenting or Article 125 was the subject of any further
debate. Accordingly, this agreement is not only the last
recorded statement of the competent legislator, but can also
be taken as the expression of its final and unchanged
intention on the question of double patenting.

B.2.2 Interpretation of the agreement in point 665.
62. The significance for the issue of double patenting of a
majority agreement being reached and recorded in the minutes
is not difficult to establish. In view of the wording of
Article 125 EPC, and the fact that the agreement was
explicitly linked to this article in the minutes, the
straightforward interpretation of the agreement is that the
(potential) Contracting States agreed that the prohibition on
double patenting was a generally recognised principle of
procedural law in the Contracting States and as such
applicable under Article 125 EPC.

63. In the opinion of the Enlarged Board, there can be little
doubt that an agreement established among the delegations was
mentioned in the records for a purpose, and that this had to
be clear to all delegations. The work of a diplomatic
conference for establishing an international treaty is a
serious matter, in which recorded agreements must carry
weight. The purpose of the agreement recorded in point 665.
of R3 is clear: it was to provide an interpretation of
Article 125 EPC and have the provision applied in accordance

with this interpretation. As is evident from the literature
(and from the preparatory documents of the Vienna Convention
itself), the practice of consulting the preparatory materials
in order to determine the legislative intent behind treaty
provisions was already long established in international law,
even if this practice was not always accepted without
reservation.

B.2.3 Reservations expressed in the referring decision
64. The Board noted that the issue of double patenting arose
during the discussions on Article 125 of the Convention, and
that up to the Diplomatic Conference it was common ground
that double patenting should not be possible. Nevertheless,
the Board finally held that it could not be established
beyond doubt that the prohibition on double patenting could
indeed fall under Article 125 EPC or that an agreement to
this effect was reached. It concluded: “The documents of the
Munich Diplomatic Conference, however, fail to demonstrate
that there was still agreement on the principle …” (Reasons,
point 58.). The Board’s doubts appear to have been based on
various factors emerging from the minutes: that a declaration
at the Diplomatic Conference was originally planned (Reasons,
point 57., referring to N3 and N4) but did not materialise,
that the agreement was not reported to the Committee of the
Whole, and that only a majority, not a unanimous, agreement
was reached (Reasons, point 58., referring to N1, i.e. points
665. and 666. of R3).

65. The Enlarged Board does not share the Board’s reservations.
The various factors which it mentioned in connection with the
agreement of point 665., and which were also put forward by
the appellant, do not cast doubt on the validity of the
agreement or its applicability for the interpretation of the
Convention. On the contrary, the agreement as recorded was

sufficient for its purpose, it did not require additional
follow-up, and there is no indication that it lost support.

B.2.3.1 Lack of unanimous agreement among the contracting parties
66. The referring decision came to the conclusion that the events
recorded in points 665. and 666. of R3 could not demonstrate
the existence of a common understanding or agreement among
all Contracting States for the purposes of Article 31 VCLT,
and could not be used either for establishing the prohibition
in place of an express provision in the Convention through
the application of Article 32 VCLT (Reasons, point 59.). This
view may be correct if it is based on the premise that the
events recorded in points 665. and 666. were evidence of only
an attempt, and as such an unsuccessful act, to bring about a
common understanding. However, in light of document M/10, it
is clear that the “establishment of the majority agreement”
was not merely an attempt, but a successful motion from the
UK delegation, the primary purpose of which was to ensure the
“mentioning in the records” of the previously established
agreement on the principle of the prohibition.

67. The fact that the agreement did not find unanimous support
does not preclude it from being taken into account as a means
of interpreting the Convention. The agreed texts of the
Convention were also established by majority vote, and even
the adoption of the Convention as a whole only required a
two-thirds majority of the Plenary (M/34, Rules 36(1) and
(2)). Each State participating in the Conference was also
entitled not to sign the Convention, or to sign it with
certain reservations (Article 167 EPC 1973). However, Article
125 could not be the subject of a reservation. From this it
is clear that the adoption of the Convention by a Contracting
State did not mean that, at the stage of the negotiations
during the Diplomatic Conference, each and every Contracting

State already had to agree specifically to each and every
Article and Rule. The common agreement of all parties
concerning the scope of the Convention as a whole was only
achieved and attested by their signatures, followed by the
appropriate ratification (Articles 165(1) and (2) EPC 1973,
Articles 11, 12 and 14 VCLT), or by accession
(Article 166 EPC 1973, Articles 11 and 15 VCLT).

B.2.3.2 Intended declaration referred to in R4
68. It was argued by the appellant and also mentioned in the
referring decision (Reasons, point 57.) that earlier
documents suggested that there was to be a declaration on
double patenting, instead of an express provision in the
Convention. As recorded in point 119. of R4, it was decided
that such a declaration should be contained in the minutes of
the Diplomatic Conference. This point of R4 is also cited in
the referring decision (Reasons, point 55.). The appellant
argued that the agreement referred to in point 665. of R3 was
not the intended declaration because it added the condition
of the same filing date. The referring decision did not
endorse this argument, but does appear to have agreed with
the appellant that the agreement of point 665. could not be
considered to be the aforementioned declaration (Reasons,
points 57. and 58.), possibly because of the lack of
unanimity and the absence of any follow-up.

69. In the Enlarged Board’s judgement, apart from the fact that
R3 does not use the word “declaration” but “agreement” in
point 665, there is no apparent reason why that agreement
should not be taken as the intended interpretative
declaration. The UK Government’s comments in M/10 make it
clear that the motion of the UK delegation had the same
objective as the foreseen declaration and that it effectively
achieved the same result. The UK proposed that the

“understandings [established at the 6th meeting should] be
mentioned also in the records of the Diplomatic Conference”.
Clearly, that happened, and once the agreement of point 665.
was recorded, any further declaration was unnecessary.

B.2.3.3 Omission of the agreement by the rapporteur of the Main
Committee I
70. The foregoing conclusion also accords with the fact that the
issue was no longer mentioned by the rapporteur of the Main
Committee I in his report to the Committee of the Whole. The
double patenting issue was discussed on several levels and
occasions and the text of Article 125 remained unchanged.
Establishing the agreement of the majority did not require
any amendment to the text of the Convention, nor could it be
seen as a resolution or recommendation, the adoption of which
would have been in the competence of the Plenary (M/34,
Rule 3(2)).

71. The absence of any mention in the rapporteur’s report to the
Committee of the Whole confirms that the issue was not
controversial and did not entail any serious discussion, as
explained in point 59. above. Reference is made to the
following account on page 183 of R3, in Chapter C, I.
Preliminary Remark: “
[t]he present rapporteur considered it
his duty to give the Committee of the Whole as comprehensive
a survey as possible of the discussions of Main Committee I
and the decisions which resulted therefrom. With this in mind
items of discussion which were of lesser importance or which
were more of a drafting nature have been deliberately ignored
even where they led to amendments to the text
”. For example,
the unanimous opinion on the error correction in point 669 of
R3 was not mentioned either by the rapporteur. Indeed, his
report concentrates on the truly contentious issues. Given
that the agreement of point 665. did not change the wording
of Article 125, there was even less reason to mention it.

B.2.3.4 Lack of proof of a final agreement

72. The Enlarged Board sees no circumstance indicating a lack of
a final agreement or any change of opinion. It is not
plausible that a change of opinion on double patenting could
have occurred without any record in the minutes. In
connection with the agreement the only dissent recorded is
the statement of the Norwegian delegation in point 666. in R3
(see point 60. above) explaining only after the majority
agreement was established why it could not support the UK’s
proposal. The Rules of Procedure expressly provided the
possibility for delegations to explain their votes, even
after a vote was held (M/34, Rule 39). It follows that
Norway’s dissent does not imply that the issue was still
open. Re-opening the debate, while possible, would have been
difficult: if a delegation still wished to assert the view
that the principle of the prohibition or its application by
way of Article 125 was wrong, it would have had to make a
proposal for reconsideration, which in turn would have
required a two-thirds majority (M/34, Rule 34).

73. Moreover, if the understanding with regard to the prohibition
on double patenting previously established at the 6th Meeting
and confirmed in point 665. of R3 had lost support, it would
have deserved a mention by the rapporteur of the Main
Committee I as well. The delegations in the Committee of the
Whole would have had to be aware of such a situation when
submitting the texts to the Plenary, likewise the delegations
in the Plenary when voting for the Convention as a whole,
including Article 125 in unamended form. The President of the
EPO argues similarly (at point 40.) when he states that a
subsequent change of view at such a late stage would have
been reflected in the minutes.


B.2.4 Agreement in point 665. of R3 as a supplementary means of
interpretation under Article 32 VCLT
74. Article 32 VCLT mentions both the preparatory work of a
treaty and the circumstances of its conclusion as
supplementary means of interpretation. The agreement recorded
in point 665. of R3 must be seen as an integral part of the
legislative process, and not as intended to be a separate
agreement or separate instrument of the parties possibly
falling under Article 31(2)(a) or (b) VCLT and requiring the
consent of all parties. If the texts of the Convention could
be adopted by a two-thirds majority vote, and draft articles
could be established by simple majority, it would not have
made sense to expect explanatory statements to be adopted
unanimously. Given that the Plenary of the Diplomatic
Conference agreed to task Main Committee I with the
preparation of the draft wording of Article 125 on behalf of
the Plenary (the Committee of the Whole also being an organ
of the Plenary, cf. M/34, Rule 3(2)), it was only logical
that any interpretation of Article 125 should also be
discussed in Main Committee I. Against this background, the
agreement recorded in point 665. of R3 was established in
accordance with the rules on decision-making which the
Diplomatic Conference laid down for itself, and to that
extent it is no less suitable as a means for determining the
common intention of the Contracting States than any of the
express provisions in the Convention.

75. It is true that the agreement recorded in point 665. of R3 is
neither an agreement under Article 31(2)(a) VCLT nor an
instrument under Article 31(2)(b) VCLT, as also noted in the
comments of the President of the EPO (at point 42.).
Nevertheless, it is a suitable and admissible means for
determining the intention of the contracting parties
concerning the scope and meaning of Article 125 EPC, and of

the Convention more generally. Since an interpretation in
accordance with Article 31 VCLT alone or in conjunction with
the case law cannot dispel the ambiguity surrounding the
question of double patenting, the meaning of the Convention
is to be determined by establishing the intention of the
parties. Pursuant to Article 32(a) VCLT, this may be done by
recourse to the preparatory work of the treaty and the
circumstances of its conclusion.

76. Summing up, the proposition that the majority agreement on
double patenting as recorded in point 665. of R3 cannot be
taken into account in interpreting the Convention is not
tenable. The preparatory documents demonstrate with
overwhelming certainty that there was a real and effective
agreement that the European Patent Office should prohibit
double patenting by taking into account principles of
procedural law generally recognised in the Contracting
States, i.e. by a direct application of Article 125 EPC.
Furthermore, there must have been a common understanding
among the potential signatories to the Convention that this
majority agreement was made on behalf of the Plenary of the
Diplomatic Conference and recorded with the purpose of
defining the scope of Article 125, and that therefore the
principle expressed in the agreement formed part of the
Convention.
B.3 Other suggestions for a legal basis

77. In view of these findings, it is not necessary to examine the
other provisions proposed as the proper legal basis for the
prohibition on double patenting, i.e. Articles 60(1), 63(1)
and 76(1) EPC. Nor is it necessary to determine the
conditions for a legitimate interest in the proceedings or to
examine if there is a need to fill a lacuna in the
Convention. The analysis above shows that the prohibition is

to be derived from the legislative intention underlying the
Convention and that no lacuna exists.

B.4 Consequence of the established legislative intent for
Article 125 EPC
78. Article 125 EPC expressly empowers and, indeed, possibly even
instructs or obliges the European Patent Office to take into
account (“berücksichtigt”, “prend en consideration”)
generally recognised principles of procedural law, where the
Convention is silent. Therefore, since the competent
legislator, here the Diplomatic Conference, established that
the prohibition on double patenting was a generally
recognised principle as a question of fact, and in addition
made it clear that this was a principle falling under Article
125 EPC as a matter of interpretation of the law, the Office
was thereby not only empowered to apply this principle but
effectively also duty-bound to do so.

79. At the time of signing of the Convention, the statement of
the delegations in point 665. of R3 had to be taken as proof
that the principle of the prohibition on double patenting was
a generally recognised principle in the Contracting States,
and therefore the Office was correct to apply it from the
start. No information has been brought to the Enlarged
Board’s attention, nor has it been argued, that this
situation might have changed, for example through the
accession of new Contracting States, or as a result of more
recent legislation in the Contracting States. Accordingly,
there is no reason to conclude that the principle is no
longer to be applied by the EPO.

80. Overlapping designations under Article 79 EPC are an
additional precondition for the prohibition to apply. Neither
the key statement in point 665. of R3 nor the previous
agreement in point 49 of R2 provide an explanation of why the

EPO must take this into account. However, there was no need
for the records of the discussions at the Diplomatic
Conference to make express mention in this context of the
precondition of overlapping territorial effect because this
principle was stated to originate in the Contracting States
and is an inherent feature of national patents. On the other
hand, the statements of Working Party I in the second and
fourth paragraphs of point 118. of R4 (cited in point 90.
below) show that the legislator was aware that double
patenting only arises in the event of overlapping
designations. Moreover, if the Office did not take this
additional precondition into account, i.e. if it refused to
grant a second European patent regardless of the status of
the respective designations, the effect of such a strict
prohibition would go beyond the scope of the original
national principle and thus deprive it of its legal basis.

81. For all these reasons, Question 1 is to be answered in the
affirmative.
C. Questions 2.1 and 2.2
C.1.1 Question 2.1
82. The above findings of the Enlarged Board confirm that on the
question of double patenting under the EPC in the narrow
sense the intent of the legislator is derivable from the
preparatory documents of the Convention. According to this
legislative intention, the prohibition is applicable “
for the
same invention in respect of which there are several
applications with the same date of filing
”. In view of the
general wording used, it is probable that different
conditions for the constellations set out in Question 2.1
were not envisaged.


83. The appellant argued that the agreement was restricted to
applications with the same filing date, and for this reason
the constellation of Question 2.1(c) was not covered.
However, as the preparatory documents show, the final
agreement referred to in point 665. of R3 was a confirmation
of the earlier agreement at the 6th Meeting (point 49 of R2).
The referring decision pointed out that the earlier agreement
also contained the condition of the same filing date, but
that this was likely to have been an inadvertent inaccuracy
(Reasons, point 56.). It is reasonable to assume that this
inaccuracy was taken over when the agreement in point 665. of
R3 was established and recorded. As noted in point 80. above,
the additional requirement that has been consistently applied
by the Office, namely that the prohibition only applies where
the application under examination and the already granted
patent have common designated states, was not contained in
the agreement of point 665. of R3 either.

84. Furthermore, the agreement in point 665. of R3 is not to be
read as a legal provision in the usual sense, but rather as
what it was intended to be, namely the expression of a
general principle. Therefore, it cannot be expected to have
been formulated with the precision of a legal provision.
Against this background, the Enlarged Board considers that
the requirement of the same date as stated in point 665. of
R3 is to be understood as the same “effective date”, in line
with the explanation in point 18. of the Reasons of the
referring decision, such that applications with a common

priority are also covered by the prohibition.
C.1.2 Conclusions from the Minutes of the 10th Meeting of Working
Party I (R4)
85. That the prohibition on double patenting applies to all three
of the constellations set out in referred Question 2.1 is
confirmed by the parts of the preparatory work that preceded

the final conclusion expressed in point 665. of R3. The
Enlarged Board sees no reason to conclude, nor was any put
forward in the referring decision, that those parts of the
travaux préparatoires which treat the various aspects of this
question, i.e. the applicability of the prohibition in the
different constellations of Question 2.1, are not a reliable
source for exploring the legislative intent, or that the
positions expressed there were later replaced by contrary
ones. Nor is there any indication in the
travaux
préparatoires
or elsewhere that, despite mentioning no
particular conditions, the final explicit statement of the
legislator, i.e. the agreement recorded in point 665. of R3,
was for some other reason intended not to be generally
applicable. Indeed, the Board expressed the view (Reasons,
point 55.) that the
travaux do not seem to support any
exception for European applications having different filing
dates but a common priority, because, as attested by R4 (see
points 117-120), the double patenting prohibition was also
discussed for such applications, and not only for divisional
applications. Other decisions cited in the referring
decision, e.g. T 2461/10 (supra, Reasons, point 14.), came to
the same conclusion.

86. The Enlarged Board concurs with these findings of the
referring decision and T 2461/10. Points 117. and 118. of R4
provide a clear indication that the legislator’s intention to
exclude protection for the same subject-matter covered not
only parent-divisional pairs of applications but also
applications with a common priority, because each point
contains an identical statement to this effect (see also the
referring decision, Reasons, point 55., where these
statements are cited). Formally, point 117. is directed to
divisional applications (Article 137a of the then Draft
Convention), but its first paragraph already makes clear that

the considerations are to be extended to parallel
applications (i.e. constellation a) of Question 2.1) as well.
Point 118. explicitly addresses applications with a common
priority, thus demonstrating that the prohibition is also
applicable to those.

87. Reference is also made to the comments of the President of
the EPO, point 27., and to decision T 2563/11 (supra,
Reasons, points 2.4 and 2.5), where the deciding board noted
that point 120 of R4 provided a more detailed explanation of
why, in the context of divisional applications, a provision
prohibiting claims directed to the same subject-matter had
been deleted, and why this provided support for the
prohibition being of a more general nature. The same
conclusion was drawn by the Board in the referring decision,
Reasons, point 69., in connection with its analysis of
Article 76(1) EPC. A comparison of the original and the
amended wording of Article 137a (European divisional
applications) illustrates this point.

Article 137a(2) as approved at the 9th meeting of Working
Party I (in October 1971) was worded as follows:
(1)…
(2) The claims of the earlier application and any divisional
application shall exclude the matter for which protection is
sought by any of the other applications. Where possible, the
description and drawings of each application shall relate
only to the matter for which protection is sought by that
application. However, when it is necessary for an application
to describe the matter for which protection is sought by
another application, it shall include a cross-reference to
that other application.

(source: BR/134 e/71, cf. Introduction, point 2, explaining
that this draft was the outcome of the 9th meeting of Working

Party I and that it would be discussed at the 10th meeting;
also cited in the referring decision, Reasons, point 54.)

Following the deletions made at the 10th Meeting, Article
137a(2) had this wording:
“(2)
Where possible, the description and drawings of the
earlier and any divisional application shall relate only to
the matter for which protection is sought by the respective
application. However, when it is necessary for an application
to describe the matter for which protection is sought by
another application, it shall include a cross-reference to
that other application.

(source: BR/139 e/71, cf. R4, point 4)

88. Considered in isolation, the deletions from the wording of
Article 137a of the Draft Convention may not point to a
general prohibition on double patenting, but could on the
contrary appear to endorse the possibility of claiming
identical subject-matter. However, the correct explanation is
to be found in the aforementioned point 120. of R4, and in
this regard, rather than the English text (quoted by the
President of the EPO in point 27. of his comments), it is
more instructive to look at the German version (BR/144 d/71):
Um einem Umkehrschluss aus Artikel 137 a Absatz 2
vorzubeugen, der dahin gehen könnte, dass - ausser bei
Teilanmeldungen - die Patentansprüche späterer Anmeldungen
denselben Gegenstand enthalten dürfen wie die Ansprüche
früherer Anmeldungen, beschloss die Arbeitsgruppe, Satz 1
dieser Bestimmung zu streichen.
“ Thus the German version
makes it clearer that the deletion was meant to prevent any
inverse conclusion that only divisional applications had to
be directed to different subject-matter, whereas other
applications of the same applicant were permitted to claim
the same invention. The French version (BR/144 f/71) conveys

the same sense as the German. Thus point 120. of R4 is
consistent with the conclusion of the Enlarged Board’s above
reasoning that the prohibition on double patenting is general
and applies to all the constellations of Question 2.1.

89. Thus the Enlarged Board considers that the travaux
préparatoires
do not point to any special circumstance or
condition inherent in the identified constellations which
would lead to the conclusion that any of the three
constellations should be treated differently from the others
with respect to the prohibition on double patenting. This
gives the answer to Question 2.1.

90. The appellant also argued that the last sentence in the
fourth paragraph of point 118. of R4 suggests that in cases
of internal priority the legislator accepted an extended term
of protection in respect of states designated in both the
priority and the subsequent application. The following is
stated there: “
The Working Party came to the conclusion that
even when an applicant claimed the priority of an earlier
European patent application, he should not be able to obtain
the same patent twice for the same invention in the same
designated States. It was not necessary, however, to provide
a rule to this effect in the Convention. Under the present
version of the Paris Convention, there would have to be an
extended term for those States which were designated twice
”.

91. However, this statement has to be read together with the
condition described at the end of the second paragraph of
point 118. of R4, namely the assumption that the earlier
application would have been withdrawn in the meantime:
“The
majority of the delegations considered that Article 73 of the
Convention [Priority right, essentially corresponding to
Article 87 EPC 1973 and Article 87 EPC 2000] did not in

principle prevent an applicant from claiming the priority of
an earlier European patent application, while Article 8 of
the PCT in fact makes provision for this in respect of
international applications. It did appear doubtful whether a
State which had been designated in the earlier application
could be designated again in the later European application,
as this could lead to the term of the patent being extended
by the time between the filing of the two applications
in the
case of the earlier application being withdrawn during that
time
(emphasis by the Enlarged Board). In the third
paragraph of point 118. the Working Party established that
the problem of an extended term was likely to disappear due
to expected amendments to the Paris Convention (mentioned as
the “Paris Union”). As a result, the extended term referred
to can be understood as a combination of the term of
protection under Article 64(1) EPC with that of provisional
protection under Article 67(1) EPC (at that time Articles 18
and 19, which essentially corresponded to the articles of the
EPC 1973 and the present articles). In light of this, the
statement of the Working Party relied on by the appellant
does not concern the situation of double patenting in the
narrow sense, nor does it contradict the Working Party’s
preceding explicit statement that a second patent cannot be
granted for the same invention even in the case of internal
priority.

C.2 Question 2.2
92. In light of the above findings, it is clear that the
legislator’s intention with respect to the prohibition on
double patenting also extends to applications having a common
priority. As stated above, the answer to Question 2.1 is that
the prohibition applies to all three constellations
identified. It follows that Question 2.2 does not require a
separate answer.


Order
For these reasons, it is decided that the questions
referred to the Enlarged Board of Appeal are answered as
follows:
1. A European patent application can be refused under
Articles 97(2) and 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 Article 54(2) and (3) EPC.

2.1 The application can be refused on that legal basis,
irrespective of whether it
a) was filed on the same date as, or
b) is an earlier application or a divisional application
(Article 76(1) EPC) in respect of, or
c) claims the same priority (Article 88 EPC) as the European
patent application leading to the European patent already
granted.

2.2 In view of the answer to Question 2.1 a separate answer is
not required.


This decision G 4/19 (pdf) has European Case Law Identifier: [not yet known]The file wrapper can be found here. Photo 170330-double-exposure-tulips-fence.jpg by r. nial bradshawmobtained via Flickr under CC BY 2.0 license (no changes made).

5 comments :

  1. It is a bit disappointing that the Enlarged Board limited itself to answering the referred questions as they are and as far as relevant for the underlying case.

    E.g., in reason 15, the Enlarged Board clarified that the answers are limited to "same invention" defined by "same independent claims", and that overlapping claims will not be considered:
    "15. In addition, the referral did not indicate that the Enlarged
    Board needs to clarify all the details of the referred
    questions. For example, it is not apparent that the
    definition of the “same invention” is a contentious issue in
    the case underlying the referral, given that the claims
    refused by the Examining Division are identical to the claims
    of the patent granted earlier (Reasons, point 3.)"

    If the applicant would amend the independent claim to include a feature from the description, a dependent-patent situation would arise. It would need a new referral to answer whether that type of double patenting would be allowed.

    ReplyDelete
  2. General principle? Not in Norway! Is his why Norway did not accede to the EPC until 2008?

    ReplyDelete
  3. Attentive Observer24 June 2021 at 18:11

    This decision fails to convince although it is very long, not to say verbose.
    What is bothering is the kind of "dynamic interpretation" of the travaux préparatoires which claims that since most of the countries were in favour of the prohibition, it can be applied, although there is no formal decision in this matter.
    To me it remains a decision for the national legislator. It can be decided which patent "survives" or with which patent an infringement action can be run. The problem is similar with PCT direct applications ending in a patent and Euro-PCT applications ending also with a patent. In lots of countries rules of precedence have been enacted.

    ReplyDelete
    Replies
    1. I agree. To consider a majority standpoint as general principle and to consider a majority standpoint as if it has been codified in the EPC is quite drastic... and the information in the National Law Tables on double patenting (Art.139(3)) is explicitly mentioned in reason 38 as not usable or not reliable: "the regularly updated compilations by the EPO of the relevant provisions of national law (cited as N5 in the referring decision), only document the practice of the Contracting States concerning the implementation of Article 139(3) EPC, but cannot provide direct information about their practice on double patenting in the narrow sense" and "Still, it remains the case that there are no data available to the Enlarged Board which would allow it to safely establish the practice in all or at least the majority of the Contracting States and therefore to confirm the applicability of the prohibition under Article 125 EPC on that basis.", without -it seems- even an attempt to check it, while it is very relecvant to the point at stake!

      By the way, there is no discussion in the decision as to what "a principle generally recognised in the Contracting States" exactly means. Does it mean that the principle needs to be recognized by a large majority (80&?), by a simple majority (51%?), recognized by all but at different degrees (e.g., not the same claims in some states, not the same scope in other states, no overlap in some other states, not in all situations in some states, only for some specific situations such as only national priority in that state and EP patent, or only between 2 patents but not patent and utility model, etc). If treated as if it is EPC law, it seems fair to interpret "generally recognized principle" very narrow, i.e., with the same legal meaning and extent in all EPC states. The National Law Tables show that there not all states have the prohibition, so in my view the "we have no conclusive information so we consider that it is generally recognized" is cutting corners...
      But the decision is issued, we will need to live with it and will need to wait for further decisions as to the scope - e.g.:
      Scenario I)
      What if EP1 is granted with claims to 1. A, 2. A+B and 3. A+B+C, with the text also disclosing that feature D can be used as a further limitation (i.e., allowing amendment to 1’. A+D, 2’. A+B+D, 3’. A+B+C+D):
      1) Can a later EP2 be granted claiming 1’’. A+B and 2’’.A+B+C, but not to A as such?
      Probably not, in vierw of the logic of G 3/14: the claim to 2.A+B has been granted in EP1, so is the same claim as 1’’.A+B, and thus not allowed under G 4/19.
      2) Can a later EP2 be granted claiming 1’. A+D, 2’. A+B+D, 3’. A+B+C+D?
      Probably yes. They are all within the scope of EP1, but they are not the same claimed subject-matter. So they are outside the scope of G 4/19 – see reason 2.
      Scenario II)
      What if EP1 is granted with claims to 1. A, 2. A+B and 3. A+B+C, with the text also disclosing that feature D can be used as a further limitation (i.e., allowing amendment to 1’. A+D, 2’. A+B+D, 3’. A+B+C+D), and EP1 being amended in opposition to 1’. A+D, 2’. A+B+D, 3’. A+B+C+D?
      3) Can a later EP2 be granted with 1’. A+D, 2’. A+B+D, 3’. A+B+C+D?
      I do not know, as G 4/19 refer to the granted claims, but also refers to the claim still valid in EP1?
      Scenario III)
      What if EP1 is granted with claims to 1. A, 2. A+B and 3. A+B+C, and EP2 is (earlier or later) granted with 1’. A+D, 2’. A+B+D, 3’. A+B+C+D. As indicted above, that is probably allowed.
      4) Can EP1 then be amended in opposition to 1’. A+D, 2’. A+B+D, 3’. A+B+C+D?
      Probably not, in view of the reasoning behind G 4/19: there is already a granted right (EP2) for these claims.
      5) Can EP1 then be limited in Art.105a proceedings to 1’. A+D, 2’. A+B+D, 3’. A+B+C+D?
      probably yes, as R.95(2) does not include Art.125.

      Delete
    2. Extraneous Attorney8 July 2021 at 09:53

      I agree as well. From an admittedly cursory reading of the decision, I am left with the disquieting impression that the EBA has read into the EPC yet another provision that is simply not there. (By "yet another" I am of course referring to the precedent set in G3/19.)

      This approach is unsound in the long run. As one Justice of the Supreme Court of the United States stated in a dissent, courts have no free-floating power to rescue the legislator from its drafting errors or omissions. They have the power to apply the law as it is written, not as it ought to be written. If the law ought to be written differently, then it is up to the legislator to exercise its own power and change the law. The same is true for the EBA vis-à-vis the AC and the EPC contracting states.

      I also agree with Joel that the decision ultimately raises many more questions than it solves. There are endless ways in which the claimed subject-matter may or may not be "the same" as that claimed in another EP application.

      Delete

Statcounter