Legislative Intent Trumps Legitimate Interest: EPO Confirms Double Patenting As A Ground For Refusal

In a long awaited decision, the Enlarged Board of Appeal ("EBA") of the European patent Office ("EPO") confirmed that a European patent application can be refused on the basis of double patenting under Articles 97(2) and 125 EPC, if a patent with the same effective date has already been granted for the same subject matter. The decision revises the position previously taken by the Boards of Appeal that it is the application date-and not the effective date-that is relevant for the purpose of double patenting assessment. 

Absent any direct legal provision in the European Patent Convention ("EPC"), it has been an established practice at the EPO to raise a double patenting objection in applications sharing the application date with patents granted to the applicant for identical subject matter. This situation would commonly arise in divisional applications. However, a patent granted from a priority application would not trigger double patenting because a longer