EPO decides double patenting is a ground for refusal in G4/19
The Enlarged Board of Appeal of the European Patent Office has issued decision G 4/19 (double patenting) in which it holds that a European patent application can be refused by reason of the prohibition on double patenting.
After some initial disappointment that not even the legitimate interest in a second EP application claiming the same priority (Article 88 EPC) of an earlier European application (headnote 2.1.c)) and thus providing a longer-lasting protection could overcome the prohibition there seem to be a few positive takeaways:
- The heavy legal analysis and adherence to original intentions of the legislator could mean that the Enlarged Board of Appeal is able to keep the EPO on its legal foundations.
- The scope of the prohibition is quite narrow (same subject-matter AND same applicant). As will be recalled, in the case leading to G4/19, the claims of the second EP application were identical to the claims of the earlier application (according to headnote 2.1.c)).
- If a potential desire for a longer-lasting protection cannot be ruled out, the priority-establishing (patent) application could be simply filed elsewhere, for example, with the national patent office of a contracting state.