Wednesday, June 23, 2021 G 4/19 "Double patenting" - Press Communiqué and decision

A 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). 

Friday, December 20, 2019 T 318/14 - Double or quits, quitte ou double?

The EPC has no explicit provision preventing double patenting by the same applicant of the same invention; not by two applications filed on the same date but not connected via priority or otherwise, not by two applications filed on different dates but linked by priority (so having the same effective date but different filing date), not by by two applications filed on different dates but with the same filing date (i.e., a parent and a divisional). Nevertheless, the Guidelines and some Boards indicate that there is a prohibition of double patenting in one or more of the above situations, where protection is sought for the same scope of protection (using the same wording or wording with the same technical meaning) or even for overlapping scope of protection - the presumed prohibition being derived from Article 125 EPC (general principles of procedural law in contracting states) with the general principle alleged to be legitimate interest (by the way, the Enlarged Board concluded earlier that no legitimate interest is needed for filing an admissible opposition; that may raise doubt on whether such principle could and would apply in this situation). Some Boards indicate that there is such a prohibition but that legitimate interest arises from e.g. broad vs narrow or from a longer term in case of internal priority (and one could also consider new states acceding to the EPC or becoming a new validation state in the priority period). Other Boards however indicate there is no such prohibition in the EPC, not explicitly but also not implicitly, such that a refusal cannot be based on such an objection. It has also been argued that the matter of double patenting by two EP patents is not an EPO matter, but a matter of national law - as it is of double patenting between an EP patent and a national patent or national utility model (Art. 139(3) EPC).

In oral proceedings in early February this year, the Board decided to refer questions to the Enlarged Board to clarify the matter. The questions were also already formulated and can be found in the minutes of those oral proceedings. The written decision became available today: its length may explain why it took relatively long to issue this written decision. Earlier case law is extensively discussed, including arguments for the various possible conclusions. The three scenarios mentioned in the opening sentence of this introduction are all explicitly addressed in the questions. It may probably be expected that the Enlarged Board will address not only same-claim-wording, but also synonyms (same meaning, so same scope), equivalents (different meaning, but same scope), broad-narrow (without any disclaimers in the broad claim) aspects, as well as different territorial scope, the effect of limitation after grant, effects of changes of ownership (a transfer of the application just before grant could be used to prevent the same owner problem and thus the alleged prohibition).
The decision is certainly worth reading during the Christmas break!

Tuesday, November 01, 2016 T 1824/15 - Delayed

The appellant has argued that two different delays in the first instance proceedings each amounted to a substantial procedural violation, Rule 103(1)(a) EPC, namely the delay of over eleven years in raising an inventive step objection based on D3 and the delay of seven months in issuing the written decision and minutes after the oral proceedings. In view of these issues, the board took this case considerably out of turn, well before it would otherwise have been started. As set out below, the board finds that, in particular because neither delay was contrary to a provision of the EPC, no fundamental deficiency, Article 11 RPBA, or procedural violation, let alone a substantial procedural violation, Rule 103(1) EPC, occurred. This does not however mean that the board is indifferent to the consequences of unjustified procedural delays. (r.2.1). 
The board deviates from T 823/11, where the Board concluded "that the duration of the first-instance proceedings was excessive, the written reasoning given in the communications was inadequate, and the contested decision is insufficiently reasoned within the meaning of Rule 111(2) EPC. These deficiencies amount to substantial procedural violations."

Tuesday, July 26, 2016 T 803/12 - No right to two instances

In continuation of the patent being revoked in opposition due to lack of sufficiency of disclosure, the proprietor appeals the decision. The proprietor requests the case to be remitted to the Opposition Division as he is of the opinion the his right to be heard has been violated and that he is entitled to be heard in two instances according to Art. 32 of the TRIPS agreement and based on Art. 125 EPC, Furthermore, the proprietor requests the Board to order a correction of the minutes of the oral proceedings before the Opposition Division.

The Board disagrees with the proprietor in all aspects. The case is not remitted, the minutes are not corrected and the patent remains revoked.

Friday, May 16, 2014 T 1780/12 - Antibodies for cancer treatment - double patenting?

Photo by Dawn Huczek obtained via Flickr.

This is an appeal against the Decision of the Examining Division refusing a European patent application (herinafter "EP2"), with EP2 being a divisional application of a European patent application which has been granted (herinafter "EP1").

The Examining Division refused the divisional application under Article 97(2) EPC in conjunction with Article 125 EPC ("double patenting").

Claim 1 of EP1 read:

"1. Use of a composition comprising a biologically effective amount of an anti-aminophospholipid antibody, or antigen-binding region thereof, in the manufacture of a medicament for the treatment of cancer by killing tumor vascular endothelial cells of a vascularised tumor".

Claim 1 of the main request before the Examining Division read:

"1. A composition comprising a biologically effective amount of an anti-aminophospholipid antibody, or antigen-binding region thereof, for the treatment of cancer by killing tumor vascular endothelial cells of a vascularised tumor, inducing coagulation in tumor vasculature or destroying tumor vasculature."

In the decision under appeal the Examining Division held that:

"A claim directed to a second or further medical use claim under Article 54(5) EPC is considered to be directed to the same subject-matter as a Swiss type claim directed to the same medical use, in the sense that both these claims concern the same invention claimed in a different format".  The examining division also considered that "(…) double patenting is concerned with the substantial identity of claimed subject-matter and is not related to the (only potential) variance in the granted protection."

With its statement of grounds of appeal the appellant filed a new main request of which claim 1 was identical to claim 1 of the main request before the Examining Division.

The appellant requested that the decision of the examining division be reversed insofar as it resulted in refusal of this application. The arguments of the appellant:

"The claims of EP1 were formatted in accordance with decision G 5/83. It was widely accepted that this format of claim was a purpose-limited process claim. By comparison, the claims of the present application (EP2) were formatted in accordance with Article 54(5) EPC 2000. These claims were purpose-limited product claims, i.e. the product when packaged for that use. (...) The fact that these claim formats differed in scope was confirmed by the Enlarged Board of Appeal in decision G 2/08.

Decisions G 1/05 and G 1/06 referred to the same subject-matter. If the claims were not at least substantially identical in scope, they could not constitute the same subject matter. A process claim and a product claim could not be substantially identical in scope. For the reasons stated above, the claims were clearly distinguishable in scope and therefore were not directed to the same subject matter."

Reasons for the Decision

5. The examining division based its refusal (see section VII above) on established practice of the EPO departments of first instance (see Guidelines for Examination, C-VI, 9.1.6 and C-IV, 7.4) and decisions G 1/05 and G 1/06 of the Enlarged Board of Appeal (OJ EPO 2008, 271 and 307, respectively).

(...)

7. These passages of the Guidelines for Examination thus restrict the prohibition of double patenting to applications claiming the same invention, and more specifically to parent and divisional applications claiming "the same subject-matter". Thus, pursuant to the Guidelines, in order to determine whether or not the same invention is claimed, the claimed subject-matter has to be determined first.

(...)

10. Therefore, the board finds it appropriate to address first the issue of what constitutes the claimed subject-matter in the case under consideration.

Subject-matter

11. In decision G 2/88 (OJ EPO 1990, 93, see point 2 of the reasons) the Enlarged Board of Appeal was confronted with two points of law concerned with the interpretation and effect of patent claims. The Enlarged Board of Appeal considered (ibid., point 2.6 of the reasons) that: "(…) the subject-matter of a claimed invention involves two aspects: first, the category or type of the claim, and second, the technical features, which constitute its technical subject-matter."

(...)

13. In the board's judgement, it follows from decision G 2/88, supra, that the category of a claim and its technical features constitute its subject-matter and determine the protection conferred. This board is not aware of any different, commonly accepted definition of the term "subject-matter" in the context of a claim. While the board agrees with the examining division that EP1 and the present application relate to the same invention, the board concludes that the approach taken by the examining division when finding that the same invention eo ipso had to mean that the same subject-matter was claimed is neither supported by the Guidelines nor by the case law.

14. In the present case, what has to be considered and decided is whether or not the subject-matter of the claims, as defined by their categories in combination with their technical features, is the same for the claims granted for EP1 and pending for the main request.

15. The appellant disputes that the subject-matter of the claims granted for EP1 is the same as that of the main request (see section XVI above).

16. Claims 1, 24 and 25 of EP1 are formatted in accordance with decision G 5/83, supra, as so-called Swiss-type claims (see section III above for the complete wording of the claims). These claims take the form "Use of X for the manufacture of a medicament for the treatment of Y", i.e. they are purpose-limited process claims. The claims of the main request are formatted in accordance with Article 54(5) EPC (see section IV above for the complete wording of the claims). These claims take normally the form "X for use in the treatment of Y" and are construed as purpose-limited product claims. Thus, the categories of the claims granted for EP1 and of the claims pending as main request, respectively, are different.

17. As regards the technical features, both set of claims define the same compound and the same therapeutic use but the claims of EP1 comprise in addition the manufacture of a medicament while the claims of the main request do not (again, see sections III and IV above for the complete wording of the claims). The board concludes that the claimed subject-matter is different between EP1 and the main request.

Scope of protection

18. The examining division further held (see section VII above) that "double patenting is concerned with the substantial identity of claimed subject-matter and is not related to the (only potential) variance in the granted protection".

(...)

21. As set out in decision G 2/88 (supra, see reasons, point 3.3) the "(...) determination of the "extent of the protection conferred" by a patent under Article 69(1) EPC is a determination of what is protected in terms of category plus technical features (...)".

22. It follows from the above analysis (see points 16 and 17) that the claims under consideration belong to different categories, i.e. purpose-limited process claim vs. purpose-limited product claim and differ in addition in at least one technical feature. It is generally accepted as a principle underlying the EPC that a claim to a particular physical activity (e.g. method, process, use) confers less protection than a claim to the physical entity per se, see decision G 2/88 (supra, reasons, point 5). It follows that a purpose-limited process claim also confers less protection than a purpose-limited product claim. The scope of protection sought by the invention claimed pursuant the present main request is thus noticeably different from the scope of protection conferred by claims 1, 24 and 25 of EP1, see also decisions T 0795/06 of 18 March 2010 (points 6.3 to 6.4 of the reasons) and T 1635/09 of 27 October 2010 (points 14 and 15.1 of the reasons).

(...)

25. It follows from the above analysis that the subject-matter and the scope of protection conferred by claims 1 (...) granted for EP1 differ from the subject-matter and the scope of protection conferred by claim 1 of the main request. The board is thus satisfied that there is no manifest objective reason to deny the legitimate interest of the applicant in pursuing claims drafted in accordance with Article 54(5) EPC and thereby obtaining protection different from - albeit partially overlapping - with that of the Swiss-type claims of the parent patent already granted.

26. The board concludes that the grant of a patent on the basis of present claim 1 would not lead to double patenting. The appeal is thus allowable.

This decision has European Case Law Identifier:  ECLI:EP:BA:2014:T178012.20140130. The whole decision can be found here. The file wrapper can be found here.

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

Photo by Koshy Koshy obtained via Flickr.

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

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

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

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

The applicant appealed the decision. 

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

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


Reasons for the Decision

2. Double patenting

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

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

2.3 The Enlarged Board of Appeal observed in G 1/05 (OJ EPO 2008, 271, Reasons 13.4) and G 1/06 (OJ EPO 2008, 307): "The principle of prohibition of double patenting exists on the basis that an Applicant has no legitimate interest in proceedings leading to the grant of a second patent for the same subject-matter if he already possesses one granted patent therefor. Therefore, the Enlarged Board finds nothing objectionable in the established practice of the EPO that amendments to a divisional application are objected to and refused when the amended divisional application claims the same subject-matter as a pending parent application or a granted parent patent" [emphasis added RvW].
Evidently, with respect to the present case, a product and its use are not "the same subject-matter" in the sense of G 1/05 and G 1/06. The same is true for the use of a product and a method of fabricating it.

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

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

3. Interlocutory revision

(...)

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

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

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

(...)

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

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

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

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