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August 2010 - Intellectual Property. Legal Developments by Hertin Anwaltssozietät .

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Considering the remaining gap between the number of applications and granted patents at the European patent office (EPO)(see here), solutions are required in order to reduce burden and enhance examination efficiency for the large number of pending applications.

One such measure is the raising of objections based on double patenting. Examiners are ever more frequently raising the issue during examination, requesting either the amendment of one application so that the ‘same invention' is no longer claimed, or the suspension of examination proceedings for one of the potentially conflicting applications.

The issue of double patenting may arise in various scenarios, for example where the ‘same invention' is protected through European and national routes, between a parent and divisional application or between two European applications of the same applicant claiming the same priority date.

Perhaps surprisingly for some applicants, there is no provision in the European Patent Convention (EPC) explicitly prohibiting double patenting. The guidelines for examination provide instruction on avoiding double patenting on grounds that it is "an accepted principle in most patent systems" that the same applicant should not receive two patents for the same invention (C-IV, 7.4 and C-VI, 9.1.6). However, consensus on a legally binding provision in the EPC has not been found.

The recent EPO Board of Appeal decision T 0307/07 continued along the lines of G1/05 in asserting that an applicant has "no legitimate interest" in receiving two patents for the same subject matter. However the Board in T 0307/07 went one step further to "deduce" that under Art. 60 EPC, which provides applicants "The right to a European patent", only one patent for the same invention was intended. Arguments against this position have been raised, stating that the focus of Art. 60 EPC relates to who has the right to a patent, not to the constitution of the right (see commentary by D. Visser, Mitt. Heft 5/2009 pp 228-230).

Significant legal uncertainty remains due to conflicting case law. The decision T 587/98 held that there is no legal basis in the EPC for prohibiting double patenting according to Art. 125 EPC, which provides for the absence of procedural provisions in the EPC by allowing the EPO to take into account the principles of the contracting states.

Importantly Art. 139(3) EPC provides for double patenting in the case of European and national applications, stating that the contracting states may decide to what extent double patenting may take place. The legislator did not introduce an additional provision explicitly dealing with double patenting in the EPC 2000, leaving such decisions with the contracting states.

Various questions remain, for example, to what extent do partly overlapping claims relate to the same invention? The decision T 1391/07 provides an example of partly overlapping claims that do not violate the double patenting prohibition, although T 307/07 provides a broader definition of conflicting claims to include any "subject matter for which he [the applicant] has already been granted a patent". In this case a broader claim of one patent, which encompasses an earlier claim of smaller scope, would constitute double patenting. With this in mind, does the definition of ‘the same invention' for double patenting correspond to the requirements of ‘the same invention' when claiming priority?

Despite the unclear legal basis for raising double patenting objections during examination the EPO is active in making such objections. Until the EPC is further revised or relevant case law appears, the potential for rejections based on double patenting remains difficult to assess. Such rejections must however be considered when assessing the strategic benefits of submitting multiple patent applications directed towards potentially conflicting subject matter.


Hertin Anwaltssozietät  

The HERTIN law firm was founded by Dr. Friedrich Karl Fromm in 1945. It soon became very well-known as one of the leading law firm specializing in copyright law. Since then other fields of specialization have been added and international activities grew. Today, HERTIN’s attorneys offer comprehensive consultancy and representation services relating to all aspects of copyright law and media, industrial property rights (design protection, trademarks, patent and model utilization rights), in competition law, in the associated fields of corporate law and commercial law as well as press law and personal rights.