EPO: Decision of the Enlarged Board of Appeal on double patenting

Düsseldorf, June 29, 2021 - The Enlarged Board of Appeal (EBA) of the European Patent Office (EPO) published its decision on June 22 that a European patent application can be rejected on the basis of the double patenting prohibition (G 4/19). This also applies if the previously granted patent is the priority application of the subsequently examined application.

Double patenting occurs when the application claims the same subject matter as a European patent of the same applicant and with the same effective filing date. According to the EBA decision, the application can be rejected regardless of whether it (a) was filed on the same date as the already granted European patent, (b) is a parent or divisional application thereof, or (c) claims the same priority as the already granted European patent.

In its decision, the EBA explicitly distinguishes between “double patenting” (identical scope of protection) and what it calls "double protection" (overlapping scope of protection). "In our opinion, this suggests that the prohibition of double patenting will remain limited to exactly identical claims and is not applicable to a mere overlap of claim scope," says Dr. Natalie Kirchhofer, patent attorney and partner at C&F. "Applicants often have an interest in obtaining patents with overlapping claim scopes, for example due to licensing considerations or if they first wish to obtain quicker protection for particularly important parts of the invention," adds Dr. Lauren Schweizer, patent attorney at C&F. It therefore remains to be seen whether the EPO's decision will change the current practice of double patenting at all.

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