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Two patents for one invention - why not?

Although it has been the generally held view that applicants are not entitled to two European patents for the same invention (“double patenting”), there is nothing in the European Patent Convention (EPC) that explicitly prevents this.

Some time ago, a decision by the EPO’s Technical Board of Appeal (T 307/03) held that double patenting was prevented by the wording of Article 60 of the EPC. That article states that

“The right to a European patent shall belong to the inventor or his successor in title.”

The Board considered that this means that an applicant has a right to “a” European patent, ie one and only one European patent, for any given invention.

That decision caused some surprise, and it was widely speculated that another Board might reach a different view, thereby prompting a referral to the Enlarged Board of Appeal (EBA) for clarification of this point.

In recent Decision T 1423/07 another Board of Appeal has contradicted the earlier finding, and has not felt it necessary to refer the matter to the EBA..

In this case, the application claimed priority from an earlier application that had proceeded to grant and was refused by the Examining Division on the grounds that the claims were identical to those in the earlier patent.

In the absence of specific provisions by the EPC, the original refusal by the Examining Division was made on the basis of the Guidelines (passage C-IV, 6.4) which state ‘…it is an accepted principle in most patent systems that two patents cannot be granted to the same applicant for one invention’. This statement refers to Article 125 EPC which, if there are no procedural provisions, dictates that the European Patent Office ‘shall take into account the principles of procedural law generally recognised in the Contracting States’.

Though most contracting states explicitly prohibit double patenting, the Board concluded that it is only in the UK and Ireland where this prohibition extends beyond the case of a granted national patent and a granted European patent to a situation involving one granted patent and one patent application (as is the situation in this case). There is therefore no generally accepted ‘principle of procedural law’ which would lead to the refusal of this application on the grounds of double patenting.

The Board considered the decision reached in T 307/03 in which the appeal was refused based on Article 60 EPC. The board concluded that this Article, coming in Chapter II of Part II of the EPC and regarding “Persons entitled to apply for and obtain a European patent”, is concerned with entitlement and that it therefore cannot be used as a basis for refusing an application.

With the issuance of T 1423/07 and the failure to refer the matter to the EBA, the EPO’s stance on double patenting appears to be somewhat clearer.


28 May 2010

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