In two important decisions of 2014, the Boards of Appeal (BoAs) of the European Patent Office (EPO) have ruled on the issue of double patenting.

In both cases, the applicant had filed a European patent application and a divisional based thereon. The parent application had been granted with “Swiss-type” claims, i.e. claims directed to the “use of active ingredient X for manufacturing a medicament for treating disease Y”. This is the format that had been allowed for claiming a new use of a known active ingredient before the EPC reform known as EPC2000 came into force in 2007. However, the divisional application had been prosecuted with product-for-use claims, i.e. claims directed to the “active ingredient X for use in the treatment of disease Y”. This is the format that is now allowed as a result of the EPC2000 reform.

The question addressed in both decisions was whether the above situation gave rise to a case of double patenting, given that the active ingredient X was the same both in the parent patent and in the divisional application, and the disease Y was the same as well. This is because the EPO Examining Division had in both cases refused the divisional application, arguing that this situation amounted to an unallowable case of double patenting.

As a first point, the two decisions recalled that in a decision taken by the EPO Enlarged Board of Appeal, it had been accepted that, although the EPC does not contain any provision explicitly prohibiting double patenting, the principle of prohibition of double patenting nevertheless exists on the basis that an applicant has no legitimate interest in proceedings leading to the grant of a second patent for the same subject-matter if he or she already possesses one granted patent therefor.

Thus, the BoAs held that it was essential, in the cases before them, to determine whether the subject-matter claimed in the parent patent and the one claimed in the divisional application were in fact the same.

In this respect, the BoAs came to the conclusion that Swiss-type claims of the form “use of X for the manufacture of a medicament for the treatment of disease Y” are construed as purpose-limited process claims, while EPC2000-compliant claims of the form “X for use in the treatment of disease Y” are construed as purpose-limited product claims. As a result, the BoAs held that the categories of these two types of claims are different, as is the protection conferred by these two types of claims. Furthermore, the BoAs considered that while both types of claim define the same compound and the same therapeutic use, the Swiss-type claim of the parent patent additionally comprises the feature of manufacturing a medicament while the EPC2000-compliant claim of the divisional application does not.

In view of this, both BoAs decided that the subject-matter of the claims of the divisional application was different from the subject-matter of the parent patent, so that no case of double patenting arose from the situations brought before them. In fact, both BoAs reasoned that there was no manifest objective reason to deny the legitimate interest of the applicant in pursuing EPC2000-compliant claims and thereby obtaining protection different from (albeit partially overlapping with) that of the Swiss-type claims of the parent patent.

It will surely be interesting to see whether the approach taken by the BoAs in the above-mentioned decision will also be followed by the national courts of the EPC contracting states and whether it will have an impact on how EPC2000-compliant claims are examined by the EPO Examining Divisions.

pdf download PDF »