Repercussions of G 4/19
Decision G 4/19 follows the established practice (Ne bis in idem) outlined by decisions G 1/05 and G 1/06, where it was stated that an applicant does not have a legitimate interest in the grant of a second patent to the same subject‑matter, even if there is no explicit prohibition of double patenting in the EPC.
On the other hand, decision G4/19 contradicts the opinion of the Board of Appeal in T 1423/07, where the board found that Article 125 EPC did not provide proper legal basis for the prohibition. However, the Board in T 1423/07 decided that double patenting was not an issue in this case because the granted patent and the application claiming priority of that patent had different applicants. Specifically, the priority claiming application had been assigned to a new applicant after its refusal, whereas the rights of the priority-establishing patent still belonged to the original applicant.
Several amicus curiae briefs had been filed before the decision was made and, after the decision was issued, there is concern regarding the possible loss of valuable assets. The reason is that many applicants see they are losing the possibility of an extended term of protection provided by a later filed application. In the future, it has to be considered by applicants to avoid the earlier application maturing into a patent with the broadest possible scope in order to benefit from the longer term of a later application with a broader scope claiming the priority of the earlier application. Also national patent or utility model applications may advantageously be used as priority applications, even if those might be superseded by the EP patent in several jurisdictions.
Furthermore, the referring decision and some of the amicus curiae briefs asked the EBA to clarify the meaning of the terms “same invention/same-subject matter” and “same applicant”. These questions, however, were not addressed by the EBA. Hence, it remains to be seen whether assigning the priority application and the later application to different applicants before grant will be a possibility to circumnavigate the implications of G 4/19.
It also remains to be seen in the future how the “same-subject matter” will be interpreted. G 4/19 does not give any guidance or definition of how narrow or broad this term will have to be interpreted. It seems, however, that the interpretation will be rather narrow, so that the prohibition only applies to identical subject matter. If the claims differ, it should not be a case of double patenting. Further, as mentioned above, it was not decided in G4/19 whether the above framework also has to be applied to opposition proceedings.
As an aside, it seems that by applying a similar reasoning based on Art. 125 EPC, other issues that do not have an explicit regulation in the EPC, e.g. the requirements for a valid transfer of the priority right, may be reassessed in the future.
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