The BoA has been divergent regarding whether in an internal priority situation, the applicant would have a legitimate interest in a second patent protecting the same subject matter.
The prohibition of double patenting has long been debated at the
European Patent Office and has led to divergent jurisprudence in
the Boards of Appeal "BoA". Although the European Patent
Convention "EPC" has no provision explicitly prohibiting
double patenting, in decisions G 1/05 and G 1/06, the Enlarged
Board of Appeal "EBA" acknowledged the principle of
prohibition 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. However, these decisions were made in the
context of divisional applications that result in the same filing
date as a parent patent. As the 20-year patent term is calculated
from the filing date, the parent and the divisional patents expire
on the same day. There is, however, no clarification from the EBA
regarding whether a legitimate interest exists in the case of a
so-called "internal priority."
Internal priority refers to the situation in which a patent
application claims priority from a previous patent application in
the same jurisdiction. The EPC allows a first European patent
application to proceed to grant when internal priority is claimed
by a second European patent application. Under this scenario, the
second European patent application claiming the same subject
matter, if granted, will have a patent term ending up to one year
later than the first European patent. However, the jurisprudence of
the BoA has been divergent regarding whether in an internal
priority situation, the applicant would have a legitimate interest
in a second patent protecting the same subject matter.
In appeal case T 318/14 that leads to the new referral (see link to the minutes of the proceedings), the
examining division refused the European application directed to
subject matter identical to a granted European patent from which it
claims priority. It will be interesting to see whether the EBA will
recognize a legitimate interest in an additional year of
protection. Although it is not often that both a European priority
application and a subsequent application proceed to grant, such
situations might have a solid strategic basis. For example, a quick
grant of the priority application might secure initial funding
through licensing, whereas an additional year of protection
afforded by the follow-up application might be invaluable in fields
such as biotech and pharma. Jones Day will continue to monitor the
appeal case and keep you apprised of its development.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.