EPO Board of Appeal allows double patenting where patentee has legitimate interest

In T1423/07 (made available online May 2010), the EPO Board of Appeal allowed a European patent to be granted with claims that were identical to the claims granted in respect of the European priority application.

At first instance, the Examining Division took the view that it was an accepted principle in most patent systems, including the European Patent Convention (EPC), that two patents could not be granted to the same applicant for the same invention. The Board of Appeal, however, disagreed. While they acknowledged that most patent systems in the Contracting States of the EPC prevented a patentee from having a national patent and a European patent in the same Contracting State, they concluded that there was no recognised general principle of law for refusing patent applications for double-patenting. The Board of Appeal, therefore, held that the Examining Division was wrong to refuse the application. In reaching their decision, however, the Board was careful to distinguish this particular case from the situation where the same claims were being pursued in a parent and divisional applications. With the latter, the parent and divisional applications would have had the same effective filing date and, as a result, the patentee would have had no legitimate interest in pursuing the divisional application, since both applications would expire at the same time. With the case at issue, on the other hand, the 20-year term of the application would expire after that of its priority application. The patentee, therefore, had a legitimate interest in pursuing the later application, since this could effectively lengthen his patent life.

This decision indicates that double-patenting may be possible in circumstances where the patentee has a legitimate interest in the grant of a second patent. While an extension of the patent life may be considered as a legitimate interest, it remains to be seen what other circumstances the EPO will consider as being "legitimate interests".

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