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Double patenting 1. Background 1.1 Double patenting is the patenting of the same invention in two or more applications by the same applicant within the same jurisdiction. Such activity by applicants is, in the view of many patent offices, undesirable. 1.2 There are several reasons why patent offices disapprove of patenting the same invention twice. Thus, in principle the practice entails a duplication of time and cost for both applicants and patent offices. Also, national courts could end up having to deal with multiple infringement actions by the same claimant against the same alleged infringer, and revocation/opposition proceedings could be rendered toothless if patentees have another patent to fall back on when the first is revoked. 1.3 As a matter of policy therefore, the European Patent Office (EPO) tends to object when it sees applicants trying to obtain more than one patent for the same invention. Most commonly this occurs when prosecuting divisional applications having claims directed to the same invention as the claims of the parent case. Double patenting can also occur in Contracting States to the European Patent Convention (EPC) when patents for the same invention are granted to the same applicant on both a direct national application and a European application designating the same state. 1.4 The objection to double patenting only arises when the effective dates of claims to the same invention in two cases are the same, taking account of any priority rights. If the effective dates are not the same then the later case would lack novelty over the earlier one, assuming the inventions claimed are the same and the claims share all of the same features. This however raises an extremely important question: when is the invention claimed in two cases the same? Does the invention need to have all of the same features, do the claims in two cases need to have identical scope, or does overlapping

scope suffice for patenting?

there

to

be

double-

1.5 By contrast, two applications claiming the same invention and having the same effective date, but having different applicants and predecessors in title, are not objectionable on the grounds of double patenting. 1.6 In the UK, the prohibition of double patenting is written into the statute. In the EPO, however, the legal basis for an objection to double patenting is less clear. Typically, Examiners rely on one or two passages in the Guidelines for Examination in the EPO and certain pieces of case law. 1.7 This article looks at the legal basis for double patenting objections in cases before the EPO and it explores the nature of the prohibition. At the end of the article, suggestions are made as to what an applicant can do when confronted with a double patenting objection from the EPO. 2. Legal basis in the EPC 2.1 The EPC contains no explicit provision relating to double patenting 2.1.1 The European Patent Convention (EPC) 1973, and its revised form, EPC 2000, contain no explicit mention of double patenting, as the Guidelines for Examination 1 in the EPO themselves note. 2.2 Is there implicit basis in Articles 60 and 125 EPC? 2.2.1 The absence of any explicit prohibition of double patenting in the statute has not deterred the different departments of the EPO from deducing its existence in the EPC. 2.2.2 In decision T587/98 for example, which 2 was reported in the Official Journal, the Board of Appeal overturned a decision of the Examining Division to refuse a divisional application under Article 125 EPC for
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Guidelines for Examination in the European Patent Office 2010, C-IV, 7.4 2 OJ EPO 11/2000, 497-505

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patenting the same subject matter as the parent case. Article 125 provides a means for taking into account the principles of procedural law generally recognized in the Contracting States. Since the Guidelines for Examination note that it is an accepted principle in most patent systems that two patents shall not be granted to the same 1 applicant for one invention, the Examining Division apparently felt able to import the prohibition from the patent systems of the Contracting States. In the Boards view, however, double patenting was a question of substantive law, not procedural law, hence any such prohibition could not be applied via Article 125. 2.2.3 By contrast in decision T307/03, which is critical of T587/98 and which was also 3 reported in the Official Journal, the Board of Appeal deduced from Article 60 EPC that double patenting is prohibited. Article 60 states that The right to a European patent shall belong to the inventor or his successor in title. The Board in T307/03 understood this language to mean that the inventor (or his successor) has a right to the grant of one and only one patent from the European Patent Office for a particular invention as defined in a particular claim. Furthermore, the Board justified the absence of any explicit prohibition of double patenting on the grounds that the legislator cannot be expected to have made provisions to regulate what will on grounds of economics alone be a very rare occurrence. 2.2.4 Oral proceedings in T307/03 were held in July 2007, but the written decision was only issued in March 2009, hence it is a little early to tell whether the approach taken in this case will be followed. As far as we are aware, no appeal decisions that apply Article 60 in this way have been issued since T307/03 and, indeed, decision T1423/07 has explicitly gone against T307/03 on the point (see below). 2.2.5 Shortly before oral proceedings were held in T307/03, the Enlarged Board of
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Appeal issued its decision in case G1/06. Although not directly concerned with double patenting, the Enlarged Board commented obiter dicta that an applicant has no legitimate interest in proceedings leading to the grant of a second patent for the same subject-matter if he already possesses one granted patent therefor. Consequently, they found nothing objectionable in the established practice of the EPO that amendments to a divisional application are objected to and refused when the amended divisional application claims the same subject-matter as a pending parent application or a granted parent patent. The existence of the principal of prohibition of double patenting was therefore acknowledged in G1/06, and this decision has subsequently been used by the EPO as an authority for raising objections to the practice. 2.2.6 Interestingly, the chairman in T307/03 sat as one of the members on the Enlarged Board of Appeal in case G1/06. It seems that in T307/03 he was perhaps moved to go a little further than G1/06 and pin the prohibition on a particular provision of the EPC, i.e. Article 60. 2.2.7 Decision T1423/07, which was issued after both G1/06 and T307/03, considered the question of double patenting between a pending European application and the European patent granted on its priority application. Again, Articles 60 and 125 EPC were considered and an extensive review of the national laws of the contracting states was conducted. 2.2.8 Regarding Article 60 EPC, the Board in T1423/07 could not see how this article provided a basis for refusing an application for double patenting. The Board noted that Article 60 is integrated into the part of the EPC which concerns Persons entitled to apply for and obtain a European patent Mention of the inventor and thus it defines to whom the right to a European patent 4 Importantly, in T1423/07 it was belongs.
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OJ EPO 7/2009, 418-432

http://www.epo.org/law-practice/legaltexts/html/epc/2010/e/acii_ii.html

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declared that Contrary to the reasoning applied in decision T 307/03, this board is convinced 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. 2.2.9 Regarding Article 125 EPC, the Board in T1423/07 determined that although there is a general principal of law recognized in the Contracting States for not allowing double patenting to occur between a granted national patent and a granted European case, the statutes of only two Contracting States (the United Kingdom and Ireland) and the case law of a third (Germany) provide a basis for refusing a patent application for double patenting. They thus concluded that there is no principle of law generally recognized in the Contracting States for refusing a European patent application on the ground of double patenting.. 2.2.10 In addition, when the effective date (taking into account priority rights) of the claimed subject matter is the cause of double patenting, and excluding the collision of parent and divisional applications, T1423/07 found that only the UK and Ireland provided a statutory basis for refusing a patent application. 2.2.11 Article 125 EPC was thus held not to provide basis for refusing a European application for double patenting. 2.2.12 Thus there seem to be significant differences in opinion between different appeal boards regarding whether or not Articles 60 and 125 EPC prohibit double patenting. It remains to be seen which, if any, of these decisions are followed by the Examining Divisions. 3. The nature of double patenting at the EPO

3.1 When are two inventions the same? 3.1.1 Assuming the formal requirements of double patenting are met by two European cases, i.e. that they have the same applicant and effective dates, the question that arises is do they claim the same invention?. 3.1.2 Unfortunately, the law is not very clear when it comes to determining what constitutes the same invention as another. 3.1.3 According to the Guidelines for 1, 5 a parent and a Examination in the EPO, divisional application must not contain claims of substantially identical scope. No guidance is provided as to what substantially means in this context. The Guidelines also state that one application must not claim the subjectmatter claimed in the other, even in different words. The difference between the claimed subject-matter of the two applications must be clearly distinguishable. When the claims of the two cases are conflicting in this manner, then the applicant should be told that he must either amend one or more of the applications in such a manner that they no longer claim the same invention, or choose which one of those applications he wishes to proceed to grant. 3.1.4 One situation in which, according to the Guidelines, there is not double patenting is when a parent case claims element A and its divisional case claims element B, where A and B are separate and distinct, and one of the two cases additionally claims the combination A plus B in which the two elements function together. The combination of A plus B would of course infringe the main claim of the other case, but this is not deemed to fall within the prohibition, presumably because the relevant claim scopes are quite different (i.e. not substantially identical). 3.1.5 Equating claims to the same invention with claims to the same subject matter, as do the Guidelines for Examination in the context of double patenting, appears on the face of it
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Guidelines for Examination in the European Patent Office 2010, C-VI, 9.1.6

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to be similar to the way in which the validity of priority claims is assessed by the EPO, where again the focus is on the identity of subject matter claimed. According to Article 87(1) EPC, a person may enjoy for the purpose of filing a European patent application in respect of the same invention, a right of priority during a period of 12 months from the date of filing of the first application [emphasis added]. Essential guidance for determining whether or not two inventions are the same in the context of a priority claim was provided in decision G2/98 of the Enlarged Board of Appeal, according to which the skilled person must be able to derive the subject-matter of the claim directly and unambiguously, using common general knowledge, from the previous application as a whole [emphasis added]. This test is effectively the same as the strict test for added matter in Europe and thus for priority to be acknowledged it is necessary to find clear and unambiguous disclosure in a priority document of the precise combination of features claimed in a later European case. 3.1.6 It is unclear from the case law whether a G2/98 standard for the same invention assessment should be applied when looking at the question of double patenting. Decision T307/03 appears to have applied a more relaxed test, less favourable to the applicant, whereas in T1391/07 greater focus was perhaps placed on the identity of subject matter claimed in the two cases. 3.2 EPO case law on double patenting 3.2.1 Decision T587/98 3.2.1.1 This case, which predates G1/06, concerned a divisional application whose main claim was broader than the main claim of the granted parent patent and which encompassed the subject matter of the latter in its entirety. None of the dependent claims in the divisional had the effect of limiting the subject matter to that specifically claimed in the parent. 3.2.1.2 In a synthesis of the facts, the Board held that the divisional effectively claimed

subject matter A (implicitly with or without feature B), whereas the parent claimed the combination A plus B. The Board considered the situation in which an earlier application disclosing A alone was citable (i) for novelty only against a later case claiming the obvious variant AB (which occurs in Europe when an earlier European application is only published after the filing date of a later European case), or (ii) for novelty and inventive step against a later case claiming the non-obvious variant AB. In both situations, the later case (AB) would be patentable over the earlier one (A only). Since such overlap in subject matter in these situations is not prohibited under the EPC, the Board could not see why it should be prohibited in the case of a parent and a divisional application. 3.2.1.3 In conclusion, the Board in T587/98 held that there is no express or implicit provision in the EPC which prohibits the presence in a divisional application of an independent claim - explicitly or as a notional claim arrived at by partitioning of an actual claim into notional claims reciting explicit alternatives - which is related to an independent claim in the parent application (or patent if, as in the present case, it has already been granted) in such a way that the 'parent' claim includes all the features of the 'divisional' claim combined with an additional feature. Thus there was no double patenting. 3.2.1.4 Given the Boards comments regarding novelty and inventive step, it seems likely they would have reached the same finding, i.e. no double patenting, had the parent case granted with a claim to A and the pending divisional claimed the A plus B combination, even though the divisional would be claiming subject matter entirely within the scope of its parents claims. 3.2.1.5 Since the Enlarged Board of Appeal issued decision G1/06 (see above), only three decisions have (as far as we are aware) been issued in which a comparison of the claims in two cases was made in order to determine whether or not there was double patenting. These are, in the order in which

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they were issued in writing, T1391/07, T307/03 and T936/04. 3.3 Decision T1391/07

emphasis added to the phrase several times by the Board. 3.4 Decision T307/03 3.4.1 Again, the Board was confronted with a divisional application whose subject matter was very similar to that of the granted parent patent. 3.4.2 The applicant submitted three sets of claims during the course of the appeal proceedings a Main Request, a First Auxiliary and a Second Auxiliary Request. 3.4.3 In the Main Request, claim 1 corresponded exactly to claim 3, when directly dependent on claim 1, of the parent. This was held to be double patenting and thus the Main Request was refused. 3.4.4 Claim 1 of the First Auxiliary Request was the same as claim 3 of the Main Request except for the addition of the word catalyst. In the Boards view, the catalyst was an implicit feature of the Main Request and making it explicit did nothing to escape the same finding of double patenting. 3.4.5 Claim 1 of the Second Auxiliary Request, and all of the dependent claims, defined one feature (alcohol) more broadly than the corresponding feature in claim 3 of the Main Request (aliphatic alcohol), but otherwise these claims were considered to be the same. Since claim 1 of the parent patent was limited to aliphatic alcohol, the main claims of the Second Auxiliary Request and parent were thus of partially overlapping scope, with claim 3 of the parent removing the extra breadth provided by claim 1 of that case. 3.4.6 The Board refused the Second Auxiliary Request for reasons of double patenting. In its view, the extent of the double patenting was not something that can be ignored as de minimis, given that the subject-matter which would be double patented is stated to be the preferred way of carrying out the invention in the divisional case. It was further held that the double patenting objection can be raised

3.3.1 As in T587/98, the Board was confronted with a divisional application whose subject matter was very similar to that of the granted parent. 3.3.2 Claim 1 of the divisional, which was the only claim, had one feature defined more broadly, and one feature defined more narrowly, than the corresponding features in claim 1 of the parent. The main claims in the two cases were therefore partially overlapping in scope, although unlike in T307/03 (discussed below) there was no dependent claim in either case that removed the relevant extra breadth provided by the main claim on which it depended. The Board held that the subject matter claimed in the two cases was not the same, due to their distinguishing features, and that they did not claim the same invention. According to the Board, as the practice of prohibition of "double patenting" under consideration is confined to patents and applications directed to the same invention as defined by the subject-matter of the corresponding claims and is therefore confined to claims conferring notionally the same scope of protection, the Board sees no basis for extending this practice to cover claims not defining the same subject-matter but conferring - as is the case with the application in suit and the corresponding granted parent patent - a scope of protection overlapping with each other only partially in the sense that some, but not all of the embodiments notionally encompassed by one of the claims would also be encompassed by the other one of the claims. 3.3.3 There was thus a real focus on the identity of subject matter claimed, similar to the same invention test for priority claims set out in G2/98. Indeed, T1391/07 quotes passages from both the Guidelines for Examination and decision G1/06 that contain the phrase same subject matter, with

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where subject-matter of the granted claim is encompassed by the subject matter of the claim later put forward. 3.4.7 The significant overlap in scope (parent claim 3 lay entirely within the scope of claim 1 of the Second Auxiliary Request, the only difference between them being the breadth of definition of a particular feature) and the teaching in the body of the divisional specification directing the skilled person to operate preferentially in the area of overlap thus lead the Board to a finding of double patenting. 3.4.8 The same invention test applied by the Board in this decision is clearly different from the test used when considering priority claims (claim 3 of the parent case could not, for example, have served as the basis for a priority claim for the subject matter of claim 1 of Second Auxiliary Request). 3.5 Decision T936/04 3.5.1 This case was decided by the same Board with the same chairman as decision T307/03. 3.5.2 A double patenting objection was raised by an opponent against a granted European patent vis--vis its then still-pending divisional application. Notwithstanding the Boards ruling that such an objection was not a ground for opposition, it was held that there was in any case no double patenting when the claims of the two cases were compared. 3.5.3 Both cases related to a chemical process carried out in the presence of a catalyst composition, but the catalyst composition specified by the relevant claim in each case had at least two features defined more broadly than the corresponding features in the claims of the other case, resulting inter alia in a catalyst whose composition appeared to differ between the two cases. 3.5.4 The Board thus saw no occasion to raise a double patenting objection. 3.6 Summary

3.6.1 It is difficult to draw any firm conclusions from the developing EPO case law on double patenting, and any conclusions that can be drawn may not necessarily be persuasive when put to a European examiner. 3.6.2 The key requirement for double patenting is, according to the Guidelines for Examination, substantial identity of claim scope. It is of course difficult to make comparisons between the differences in claim scope that have been considered in the different appeal decisions. However, it is perhaps noteworthy that in T307/03, in which double patenting was found, the scope of the relevant claim in one case lay entirely within the scope of the relevant claim of the other case, whereas in T1391/07 and T 936/04 the overlap was only partial in that the relevant claim in each case contained one feature defined more broadly than it was in the other case (in T936/04 there were at least two features defined more broadly in each case). For this reason alone it might be said that there was greater identity of scope between the claims under consideration in T307/03. 3.6.3 In addition, in T307/03 the case having the broader claim contained a teaching for the skilled person to work preferentially in the territory of the narrower claim of the other case (and hence the overlap in scope was not considered to be de minimis). Again, it might be argued that such a teaching had the effect of increasing the identity between the two cases. 3.6.4 Unlike the A-plus-B example set out in the Guidelines for Examination, and the Aplus-B example of T587/98, decisions such as T307/03 deal with situations in which two cases specify the same features but defined more or less broadly depending on the case. It thus seems that an important distinction should be drawn between the situation in which the claims being compared in two cases differ (i) by the presence in one of a separate and distinct element and (ii) by the breadth of definition of a particular feature.

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3.6.5 If the claims of one case contain a separate and distinct element vis--vis the claims of the other case then as a general rule there is, according to the Guidelines for 5 By Examination, no double patenting. contrast, if the only difference between the claims of two cases is the breadth of definition of feature A, such that in the narrower case the definition falls entirely within the scope of the broader case, then there may (depending on the circumstances) be double patenting if T307/03 is to be followed. 4. Other issues 4.1 Legitimate interest 4.1.1 According to G1/06, an applicant has no legitimate interest in proceedings leading to the grant of a second patent for the same invention. A similar view was expressed in decision T307/03, in which it was said that The Board can recognize no legitimate interest in anyone having two or more identical patents with the same claims and the same priority dates. 4.1.2 In decision T1391/07, in which the parent and divisional claims overlapped only partially in scope, the Board held that lack of legitimate interest cannot be invoked in the case in which the scopes of protection conferred by the respective subject-matters overlap only partially with each other as there is no manifest objective reason to deny the legitimate interest of the applicant in obtaining a protection different from - although partially overlapping with - that of the parent patent already granted. It might be said that this conclusion follows naturally from the more significant finding that the two cases in question did not claim the same invention. 4.1.3 An interesting challenge to the assumption of lack of legitimate interest was made in decision T1423/07, in which the question of double patenting between a pending European application and the European patent granted on its priority application was considered. The Board effectively argued that the Enlarged Boards

comments in G1/06 were confined to collisions between parent and divisional cases in which the filing dates and twentyyear terms are the same. The case at issue differed from that situation in that the conflicting documents had different filing dates and thus different patent terms. In those circumstances, although the later case took the effective date of the earlier case (due to the priority claim), it will of course expire later and this was seen to provide a legitimate interest for the applicant. 4.2 Post-grant objections to double patenting 4.2.1 In three of the four cases reviewed in section 3 above, the issue of double patenting arose during the prosecution of a European application. In decision T936/04 by contrast (also reviewed in section 3), an opponent tried to raise a double patenting objection against a granted European patent. The opponent argued that an amendment made to the patent in suit during the opposition phase resulted in double patenting due to the existence of a divisional application for the same invention which was pending at the time. 4.2.2 Due to the pendency of the divisional application, the Board held that it was correct for the Opposition Division in the granted parent case to disregard the double patenting objection and allow the amendment to the granted patent. It was up to the Examining Division, in the proceedings on the pending divisional, to avoid any double patenting. The Board further held that double patenting is not a ground for opposition, but this was qualified with the statement that It is within the discretion of the instances of the EPO to raise the objection in opposition or opposition appeal proceedings against proposed amended claims, but this should be done only in clear cases. The purpose behind the principle of prohibition of double patenting is to avoid unnecessary duplication of effort, and not to impose on the instances of the EPO an obligation to make a complex comparison between the case before them and the claims that may have been granted in some other proceedings..

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4.2.3 T936/04 thus suggests that a double patenting objection can be raised post grant during opposition proceedings, albeit by the EPO only and at its discretion. 4.2.4 Of course, there is nothing to stop an opponent discussing the issue of double patenting so that the EPO can then, in its discretion, raise the objection itself. In view of the Boards comments, for the objection to succeed in opposition proceedings the conflicting case would probably also need to have been granted at the time the objection is raised. The divisional application considered in T936/04 did in fact go on to grant during the course of the appeal proceedings. However, in view of the passage quoted above, and due to the perceived differences in the subject matter being claimed in the two cases, the Board saw no occasion to raise a double patenting objection. 4.3 Double patenting when a case is withdrawn 4.3.1 In decision T114/06, which concerned an appeal from a decision of the Examining Division to refuse a divisional application, the Board inter alia considered a double patenting objection raised by the Examining Division against the divisional in view of the claims in the parent application. The parent application was in fact withdrawn before the Examining Division took its decision in the divisional case from which the appeal was filed, and thus the Board held that the question of double patenting did not arise. 4.4 Identity of applicant 4.4.1 In decision T1423/07, the Board understood double patenting as requiring that the parties of the conflicting patents or patent applications be identical. However, in the case at issue the proprietor of the earlier European patent had assigned his later European application, which claimed priority from the earlier one, to a different company. Since the Guidelines for Examination say that where two applications of the same effective date are received from two different applicants, each must be allowed to proceed

as though the other did not exist, the Board held that formally there was no double patenting. Interestingly, the later application was assigned to the other company four years after it was filed, i.e. both the later application, and the application for the earlier patent, were in fact received from the same applicant, contrary to the situation quoted above. 4.4.2 Thus, T1423/07 suggests that a simple assignment of a case to another legal person may be enough to overcome a double patenting objection. Indeed, it may not even be necessary to transfer a case very far: in T1423/07 the two companies in question shared the same first name and thus probably belonged to the same group of companies. 5. Advice for applicants 5.1 In view of the foregoing, when confronted with a double patenting objection from the EPO we recommend using one or more of the following arguments, where applicable. We have successfully used arguments such as these to overcome double patenting objections on more than one occasion, and indeed in one case our appeal against a refusal based on double patenting was overturned by the Examining Division (socalled interlocutory revision). 5.2 It is also worth bearing in mind the points made in section 3.6 and section 5.3 below when drafting claims in a case that might be vulnerable to a double patenting objection. 5.3 Argue lack of basis for the objection in the law 5.3.1 Applicants can argue that there is no basis in the European Patent Convention for the prohibition. The Guidelines for Examination themselves note that there is no mention of double patenting in the EPC, and T1423/07 explains why Articles 60 and 125 EPC are not applicable. Indeed, it is probably worth drawing attention to the passage from T1423/07 quoted above on the point. The passage in question reads:

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this board is convinced 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. 5.3.2 Notwithstanding the absence of basis in the EPC, the following additional arguments may also be relevant when faced with a double patenting objection from the EPO. 5.4 Argue legitimate interest 5.4.1 According to the EPO case law, there can be a legitimate interest in circumstances where the claims in two cases overlap in scope only partially (T1391/07) and where the cause of the objection is the collision between a first application and a second application that claims priority from the first (T1423/07). 5.4.2 Depending on the fact pattern, it may be possible to argue that there is a legitimate interest for other reasons. 5.4.3 For example, where the objection to double patenting has been raised in respect of two pharmaceutical cases, it could perhaps be argued that any differences in claim wording between the two cases could have a significant impact on the ability to obtain possible future supplementary protection certificates (SPCs). It is a condition of SPC grant that the active ingredient or combination of active ingredients in a medicinal product be protected by a basic patent in force at the 6 date of the SPC application. However, the meaning of the term protected is unclear, in particular when the patent and/or medicinal product relates to a combination of active ingredients. For instance, some national patent offices and courts have taken a very strict approach, saying that both active ingredients in a combination must be specified in a claim of the patent in order for
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an SPC for the same combination to be granted, whereas authorities in other states have applied an infringement test according to which only one of the active ingredients of the combination need be specified in a claim. Consequently, there have been a number of referrals to the European Court of Justice of questions relating to the interpretation of the SPC Regulation on this point, the answers to which are unlikely to be handed down much before the end of 2011 at the earliest. 5.4.4 Thus, the precise definition of a product in a claim (whether it be a claim to a product per se, a process for making the product or a medical use claim specifying the product) could be crucial when it comes to obtaining possible future SPCs. Due to the current lack of clarity in the law, it is impossible to say whether or not subtle differences in claim wording, in particular when the claims relate to combination products, will have a significant impact on the grant of SPCs. In those circumstances, it could be argued that there is a legitimate interest in obtaining pharmaceutical patents relating to the very similar subject matter but perhaps defined a little differently. 5.4.5 No doubt with a little creative thought other legitimate interests can be identified! 5.5 Argue the invention is not the same 5.5.1 Applicants should argue that the test for determining whether or not the inventions defined in the claims of two cases are the same is a strict test of the type applied when considering priority in accordance with G2/98. Any partial overlap in claim scope means that the claimed subject matter is not identical and thus there is no double patenting. Decisions T587/98, T1391/07 and T 936/04 can be referred to in support. 5.5.2 If decision T307/03 has been cited in support of a double patenting objection then applicants should seek to distinguish themselves from the fact pattern in that case, in which double patenting was found in very particular circumstances, as discussed above in section 3.

See Article 3(a) of European Regulation No 469/2009, governing SPCs: http://eurlex.europa.eu/LexUriServ/LexUriServ.do?uri=OJ:L:2009: 152:0001:0010:en:PDF

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5.5.3 In particular, if the relevant claim in one case contains a separate and distinct element compared with the corresponding claim in the other case then the Guidelines for Examination indicate that this is not double 5 patenting. 5.6 Consider an assignment 5.6.1 If arguments such as those above do not succeed then consider assigning one of the cases to a different natural or legal person. According to T1423/07, formally there would then be no double patenting.

Author: Dr James Wilding Peer Reviewer: Richard Leoni For further information please contact: Dr James Wilding HLBBshaw Cambridge Office United Kingdom Tel: +44(0)1223 350 001 E-mail : james.wilding@hlbbshaw.com www.hlbbshaw.com The information provided in this document is, course, of a general nature and should not be considered as legal advice; if you have any specific questions, please contact us as set out above. HLBBshaw Ltd August 2011

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