Prohibition of Double Patenting in the European Patent Office Confirmed
The Enlarged Board of Appeal, in decision G4/19 issued on June 22, 2021, held that a European patent application can be refused in examination by reason of the prohibition on double patenting, thus excluding two European patents being granted to the same applicant for the same invention. In the case at issue, the scope of a European patent application was identical to the scope of a European patent granted to the same applicant, from which the European patent application-in-suit claimed priority, and was thus refused by the Examining Division.
This prohibition, now confirmed by the highest judicial authority under the European Patent Convention, should be taken into account by applicants in case of two European patent applications filed on the same date, in case of European applications having a common (national or European, i.e., internal) priority, in case of a European application and of a divisional application thereof, and in case of a European patent application claiming the priority of a previous European application (internal priority), once one of the two applications is granted. Accordingly, it is not possible to extend the protection conferred by a European patent by one year by using the internal priority mechanism.
A fuller explanation and article on decision G4/19 will appear in the July issue of our newsletter.