Double patenting under the EPC may give one extra year of protection

Until recently double patenting was not allowed under European Patent Convention. However, in the decision T 1423/07 of 19 April 2010 a Board of Appeal decided that if a European patent application claims the priority of an earlier Euro-pean patent application, the Convention provides no basis to refuse the grant of both patents based on the concept of double patenting. This provides the opportunity for the applicant to obtain one extra year of protection in the Contracting States.

To summarize the case, the applicant filed a European patent application as a European phase of an International application claiming the priority of an earlier European application. Since the subsequent application contained a main claim identical to the main claim of the first application, which had been granted by the time the subsequent application entered the European phase, the subsequent application was refused with a reference to the Guidelines for Examination in the European Patent Office, which clearly states that it is an accepted principle in most patent systems that two patents cannot be granted to the same applicant for one invention.

The Board of Appeal found that while it is generally recognized in the Contracting States that double patenting arising from a granted national patent and a granted European pa-tent is not allowed there is no principle of law generally recognized in the Contracting States for refusing a European patent application on the ground of double patenting.

Furthermore, if a European patent application claims the priority of an earlier European application the applicant may obtain one extra year of protection, since the priority year is not counted in the 20 years term of the patent. Thus, the board recognized that the applicant has a legitimate interest in claiming priority from a European application.

The conclusion from this is that applicants can now advantageously file a first application as a European patent application and subsequently file another European application or a PCT-application claiming priority from the first. The first application will provide the applicant with provisional protection in the Contracting States, so that upon grant of the second application the invention may be protected for up to 21 years!

Anders Heebøll-Nielsen
Associate, Certified Danish Patent Agent

Maria Stenbäck
European Patent Attorney and head of the specialist team "European Patent Law". Our European Patent Attorneys and our Attorneys at Law work closely on all IP matters, e.g. preparing, filing and prosecuting European patent applications.

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