Tuesday, 27 April 2010

T 877/06 – Differences Avert Double Patenting Issue

[5.1] The objection of possible double patenting was raised by the respondent with respect to the auxiliary requests submitted by the appellant with letter of 30 October 2009.

In this regard, the respondent drew in particular attention to divisional application EP 1 795 246, in the name of the appellant.

[5.2] Granted claim 1 of said European patent EP-B-1 795 246, which stems from a divisional application of the application underlying the patent in suit, is directed to an air cleaner including a housing having a housing compartment and a removable cover and further comprising a removable and replaceable filter element arrangement positioned in the air cleaner housing comprising a coiled media construction, a seal member and a frame arranged around one of the first and second ends of the coiled media construction; the frame having a depending lip, further including a projection having a tip portion projecting axially from one of the first and second flow faces, and including a step providing a transition area between the cross-sectional width of the depending lip and the smaller cross-sectional width of the tip portion; the tip portion of the frame having an outer circumferential surface; the tip portion of the frame being an annular sealing support for the seal member; the seal member being positioned on, and being supported by, the tip portion of the frame (highlighting by the board).

The subject matter claimed in claim 1 of said European patent EP-B-1 795 246 thus differs from the subject matter in accordance with claim 1 of the main request of the patent under appeal firstly in that it relates to an air cleaner, and not to a filter element arrangement; and secondly, as regards the filter arrangement which forms part of the said air cleaner, at least by the claim features highlighted above.

[5.3] In decision T 1391/07 [2.6-7], the board saw no basis for extending the practice of prohibition of “double patenting” to cover claims not defining the same subject-matter but conferring 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. The lack of legitimate interest of an applicant in obtaining two patents for the same subject-matter - as invoked by the Enlarged Board of Appeal in decisions G 1/05 and G 1/06 - could not be invoked when the scopes of protection conferred by the respective subject-matters overlap only partially with each other as there was 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. Accordingly, the board concluded that the mere fact that the scope of protection notionally conferred by the claim in suit would partially overlap with that of the granted parent patent did not prejudice the grant of a patent.

[5.4] In view of the substantial differences identified under point [5.2] above resulting in, if at all, only a partial overlap in the respective scopes of protection conferred by EP-B-1 795 246 and the opposed patent, the board concludes that no issue of double patenting arises with respect to the claims of the main request.

I for one am happy to see that T 307/03 (where the Board held that a double patenting objection can be raised also where there is only an overlap of the subject matter claimed in distinct applications) appears to be more and more isolated. Some more decisions of the present kind, and we will be able to say that T 307/03 was a “one off” decision.

To read the whole decision, click here.


Anonymous said...

Still, T 1391/07 and T 877/06 do not seem to conflict with T 307/03, since the latter deals with the case that the subject-matter of the claim on file encompasses the subject-matter of the granted claim, while the two former decisions explicitly state that this is not the case there.

Anyway, I also believe that T 307/03 will turn out to be a "one off"-decision. The "lack of legitimate interest"-argument only seems to apply for the same subject-matter, i.e. claims with identical scope.