Double Patenting - By Jurisdiction - European Patent Convention - T 307/03

T 307/03

Soon after, in July 2007, the Technical Board 3.3.07 in case T 307/03 followed the Enlarged Board of Appeal reasoning and held that a "principle of prohibition of double patenting" was applicable under EPC. It additionally held that the double patenting prohibition was also applicable for a "later claim more broadly formulated" (compared to a claim already granted in the parent application). The Board notably based its reasoning on the wording of Article 60 EPC according to which " right to a European patent shall belong to the inventor or his successor in title". In other words,

" a patent has been granted to the inventor (or his successor in title) this right to a patent has been exhausted, and the European Patent Office is entitled to refuse to grant a further patent to the inventor (or his successor in title) for the subject-matter for which he has already been granted a patent."

The Board in case T 307/03 explicitly disagreed with the apparent conclusion of earlier decision T 587/98 that there would be no basis in the EPC prohibiting "conflicting claims".

In case T 307/03, which related to a pending divisional application of a granted European patent, three requests were pending. In the main request, the subject-matter of claim 1 corresponded exactly to the subject-matter of claim 3 when dependent on claim 1 of the granted European patent (that is, the patent granted on the parent application). The claim was therefore objected for double patenting and the main request was not allowed into the proceedings. The first auxiliary request was not allowed into the proceedings for essentially the same reasons. Finally, in the second auxiliary request, the subject-matter of the main claim encompassed by the subject-matter of claim 3 of the parent application as granted. This request was also not allowed into the proceedings on the ground of double patenting. The divisional application was therefore refused.