Double take: Enlarged Board of Appeal confirms in G 4/19 that patent applications can be refused on the basis of double patenting

Answering the questions referred in T 0318/14 (read our article here), the Enlarged Board of Appeal confirms patent applications can be refused on the basis of double patenting independently of whether they are (1) two applications filed on the same day, (2) parent and divisional applications or (3) an application and its priority application.
 

The decision in G 4/19

Although it is established practice at the European Patent Office (EPO) that two patents cannot be granted to the same applicant for the same subject matter, the exact legal mechanism for refusing grant of patents on this basis was previously unclear.
 
In G 4/19, the Enlarged Board of Appeal held that Article 125 EPC (which relates to taking into account law generally recognised in contracting states of the EPC) provides the legal mechanism for refusing grant of patents under Article 97(2) EPC.
 
The Board also held that patents can be refused for double patenting, regardless of whether they are (1) two applications filed on the same day, (2) parent and divisional applications or (3) an application and its priority application.
 
Rather disappointingly, the Board did not answer the final question referred in T 0318/14 as to whether an applicant had a “legitimate interest” in obtaining grant of a second application directed to the same subject matter as the first due to the resulting second patent having a later date of expiry.
 

Legal and practical implications

The decision in G 4/19 upholds established practice at the EPO that two patents cannot be granted to the same applicant for the same subject matter. It now appears there are no exceptions to this principle.
 
It should therefore be ensured that (1) applications filed on the same day, (2) parent and divisional applications and (3) an application and its priority application, are directed to different or overlapping subject matter to avoid being rejected for double patenting.

If you have any questions or would like to discuss the topic further, please contact Oliver Lam or your usual Kilburn & Strode advisor.