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Further developments on double patenting at the EPO

By Johanna Gibson, David Pearce, Jeremy Phillips and Ilanah Simon.

Thanks to the excellent EPLaw patent blog, the IPKat has learned of a recent EPO decision, T 1423/07 (available from EPOline here), in which the technical board disagrees with the view taken in T 307/03 (reported by the IPKat here, with commentary from Derk Visser here) on the matter of what, if any, basis there is in European patent law for refusing an application on the grounds of double patenting.

The argument in T 307/03 was based on the rather strange reasoning that Article 60 EPC allowed an inventor the right to be granted one, and only one, patent for his invention. This reasoning does not appear to have been agreed with by anyone else (or at least no one willing to admit it), and is thought by the IPKat to have been one of an occasional series of rogue decisions that the EPO technical boards of appeal like to throw up now and then to keep us all on our toes (anyone remember all that fuss about divisional applications a while ago?).

This now seems to have been shown to be the case, as the technical board in T 1423/07 have stated quite clearly that there is no way that Article 60 could provide basis for refusing a European application under Article 97(2) for double patenting. Contrary to T 307/03, the board in this case found that "the fact that the EPC does not contain any specific provisions relating to double patenting is decisive: in the absence of such provisions, a refusal of a European patent application for double patenting is not possible irrespective of whether or not double patenting is a rare occurrence" (reasons, point 2.3.2).

Since the technical board in this case also found that there was no reason to refer questions to the Enlarged Board, the IPKat wonders if this will be an end to the matter or if there are likely to be further grumblings about double patenting in the future. Merpel and Tufty both suspect that this is an issue that is not likely to go away just yet.

Full post as published by IPKat on April 30, 2010 (boomark / email).