EPO to take a second look at double patenting

The Enlarged Board of Appeal is considering the issue of double patenting this year (in G4/19), which so far has been prohibited on the basis that a company does not have a “legitimate interest” in obtaining two patents for the same subject matter. Of course, for biotech and pharmaceutical companies, having two patents for the same subject matter could enable them to extend the patent term and their monopoly over a high-value drug or medicine. Therefore, perhaps the European Patent Office’s reason for prohibiting double patenting is fundamentally flawed. Clarity on this matter will be of interest to many companies, particularly those in the biotech and pharmaceutical sectors, as it may impact patent filing strategy.

Introduction

Double patenting occurs when an applicant files two patent applications for substantially the same subject matter. The European Patent Convention does not explicitly prohibit double patenting. However, the European Patent Office has, for some time now, prohibited the granting of two patents to the same applicant for the same subject matter. (Other jurisdictions have similar views on double patenting, including the US). This prohibition is based on the idea that an applicant has no legitimate interest in proceedings leading to the grant of a second patent for the same subject matter. If a second patent were granted, effectively the applicant would extend protection for their invention for longer than the patent term of 20 years. In some fields, particularly those which are consumer-led or where technology is quickly superseded, companies may not need their patents to last the full patent term.

However, in the pharmaceutical sector where patents may be granted for blockbuster, high-value drugs, every single day of the patent term is important and an extended patent term is desirable. Therefore, is the EPO wrong to assume that companies would not want a second patent for the same subject matter?

This question is essentially what the EPO’s Enlarged Board of Appeal has been asked to consider in G4/19.

The Current Viewpoint

The European Patent Convention (EPC) states that inventions must be new for a patent for those inventions to be granted. Art. 54(2) EPC states that the invention must be new over any prior art that was publicly available before the effective filing date of the European patent application for that invention. This prevents two applicants (or the same applicant) from patenting the same invention. Art. 54(3) EPC states that the prior art includes European patent applications that have an earlier effective filing date than the effective filing date of the European patent application being considered, but a publication date that falls afterwards. This also prevents two applicants (or the same applicant) from patenting the same invention in Europe.

However, both statutes are only concerned with prior art that has a different effective filing date to that of the European patent application being considered. There are three situations where two patent applications for the same invention could have the same effective filing date:

  1. Two patent applications for the same invention are filed on the same date at the EPO (by the same or different applicants);
  1. A European divisional application has the same effective filing date as that of the parent European application – in this case, the applicants are necessarily the same, and the claimed subject matter of each application is the same; and
  1. A European application that claims priority from an earlier European application has the same effective filing date as the earlier application – in this case, the applicants are necessarily the same, and the claimed subject matter of each application is the same.

Thus, Art. 54(2) and 54(3) EPC do not apply to these three scenarios. However, as mentioned above, the EPO prevents double patenting on the principle 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 on granted patent for that subject-matter” (EPO Guidelines G-IV, 5.4). This is based on previous Enlarged Board of Appeal decisions in G1/05 and G1/06. The EPO Guidelines state that when both patent applications are filed by the same applicant and claim the same subject matter, once of the applications has been granted, the other will be refused. (For completeness, we note that if the two applicants in scenario 1 above are different, the two applications are allowed to proceed as though the other did not exist.)

When the original EPC was drafted (which resulted in EPC 1973), the issue of double patenting was regarded as an issue relating to patents rather than patent applications, and since patent maintenance was not covered by the EPC, it was therefore left to the contracting states to permit or prohibit double patenting. However, even though when the current version of the EPC was being drafted (EPC 2000) few contracting states had a national provision on double patenting, the EPC was not revised to include explicit provisions on double patenting.

Case T318/14

The referral of G4/19 to the Enlarged Board of Appeal has been made by the Technical Board of Appeal considering case T318/14. This case concerns two patent applications filed by the same applicant as per scenario 3 above. The applicant – Nestec S.A. – filed a first European patent application (EP09159932.4) on 11th May 2009. The patent granted in February 2012 as EP2251021B1. The granted patent relates to a composition for prevention and treatment of allergic diarrhoea, which could be safely administered without side effects and incorporated into food products for consumption by infants and young children, for example. The granted patent contains nine claims. Claim 1 is a composition comprising a specific bacterium for use in the treatment or prevent of allergic diarrhoea.

The same applicant filed a second European patent application (EP10718590.2) on 7th May 2010 with a priority claim to the first European patent application. The second European patent application had the same claim nine claims as the first European application. By the time the EPO’s Examining Division examined the second application, the patent corresponding to the first application had already been granted. Thus, in their first communication in December 2012, the Examining Division stated that the claims were “100% identical” to the first application and asked the applicant to amend the claims so that they were not identical to the granted claims or else risk refusal. The applicant argued during Examination and during the eventual appeal that the EPC does not prevent double patenting, and that the EPO’s principle for prohibiting double patenting is flawed since applicants do have a legitimate interest in getting the second patent granted in order to extend the term of protection for the invention by a year.

Referral to the Enlarged Board of Appeal G4/19

Last year, the Technical Board of Appeal dealing with T318/14 referred the following questions to the Enlarged Board of Appeal:

1). Can a European patent application be refused under Article 97(2) EPC if it claims the same subject-matter as a European patent which was granted to the same applicant and does not form part of the state of the art pursuant to Article 54(2) and (3) EPC?

2.1) If the answer to the first question is yes, what are the conditions for such a refusal, and are different conditions to be applied depending on whether the European patent application under examination was filed

       a) on the same date as, or

       b) as a European divisional application (Article 76(1) EPC) in respect of, or

       c) claiming the priority (Article 88 EPC) in respect of a European patent application on the basis of which a European patent was granted to the same applicant?

2.2) In particular, in the last of these cases, does an applicant have a legitimate interest in the grant of a patent on the (subsequent) European patent application in view of the fact that the filing date and not the priority date is the relevant date for calculating the term of the European patent under Article 63(1) EPC?

It is expected that the Enlarged Board of Appeal will consider this referral this year and provide their response to the questions. It will be interesting to see whether the Enlarged Board tries to define the term “legitimate interest”, perhaps by limiting what “legitimate interest” means in order to prevent patent term extension in this manner, or perhaps they will concede and admit that applicants do have an interest in obtaining an extra year of patent protection. In the latter case, perhaps they will determine, like the original legislators of the EPC, that double patenting is a post-grant issue for national law to deal with. Clarity on this matter will be of interest to many companies, particularly those in the biotech and pharmaceutical sectors, and we will report further as the case progresses.

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