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!
