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The European Patent Convention (EPC) does not contain any specific provisions regarding the possibility of the same applicant obtaining two European patents for the same invention. As a result, and in the past, the Boards of Appeal of the European Patent Office (EPO) have issued decisions taking varying and sometimes conflicting positions regarding the issue of double patenting.

These conflicting positions culminated in a decision by the EPO’s Enlarged Board of Appeal (the EPO’s authority of highest instance) on June 22, 2021, holding that the EPC must be interpreted as precluding the possibility for the same applicant to obtain two European patents for the same invention in the same EPC states. A copy of the decision can be found here:   

In the decision, the Enlarged Board of Appeal (EBA) had to answer the following main question:

“Can a European patent application be refused … 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 [for the European patent application]?”

The EBA reviewed the EPC, as well as the preparatory works that had resulted in the creation of the EPC following a diplomatic conference of the EPC “founding” states, and concluded that even though the EPC does not contain an explicit provision regarding double patenting, the preparatory works demonstrated that the majority of the EPC “founding” states supported the notion that no two (or more) European patents should be granted to the same applicant for the same invention for the same EPC states, if those European patents claim the same filing or priority date.

Thus, the EBA found that [a] European patent application can be refused [in examination] if it claims the same subject-matter as a European patent which has been granted to the same applicant and does not form part of the state of the art [for the European patent application].”

In its decision, the EBA clarified that the above finding applies to:

  1. Parent and divisional applications filed at the EPO; 
  2. European patent applications claiming the same priority (e.g., from a national patent application); 
  3. European patent applications claiming priority from an earlier European patent application; and
  4. European patent applications having the same filing date.

The EBA further clarified that the above finding means that the EPO can raise an objection against a European patent application that falls within one of the above categories during examination.  However, the EBA did not address the question of whether this objection could be raised in an opposition proceeding (this question went beyond the scope of the questions referred to the EBA in this case).

The EBA further clarified that the prohibition against double patenting applies only to European patent applications designating the same EPC states. Thus, if an already-granted European patent designates only certain EPC states and the still-pending European application designates other EPC states, then the double patenting prohibition does not apply.

Finally, the EBA did not expressly address or review the definition of “same invention” for the simple reason that the claims in the granted European patent that resulted in the referral to the EBA and the claims of the pending European application were completely (i.e., 100%) identical. It is worth noting that previous case law of the EPO Boards of Appeal established that claims with overlapping scope, but not identical scope, were not considered to be directed at the “same invention”.

The EBA’s decision finally clarifies a point of law that had remained open and was highly debated for several decades. As a result, Applicants should consider this important decision when filing and prosecuting divisional applications in the EPO.

This post was written by Lisa Mueller and Micaela Modiano of Modiano & Partners

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