T 2402/10 – Seeing Double

When dealing with this appeal against the revocation of the opposed patent, the Board had to deal with the question of double patenting and offers us an overview over the relevant case law.

[8] Although not being a ground for opposition, the [opponent] objected to double patenting, since claim 1 of the patent-in-suit was amended during the opposition/appeal proceedings in such a matter that its scope was fully encompassed by the scope of the claims of the patent EP 0 364 417 B granted from the grandparent application. The subject-matter of claim 1 of the patent-in-suit was not substantially different from the subject-matter of the combination of claims 1, 9 and 14 of EP 0 364 417 B for the contracting state AT, BE, CH, DE, FR, GB, IT, LI, LU, NL, SE or of the combination of claims 1 and 15 for the contracting states ES and GR.

In G 1/05 and G 1/06 [13.4], the Enlarged Board of Appeal accepted that a principle of prohibition of double patenting existed on the basis that an applicant had no legitimate interest in proceedings leading to the grant of a second patent for the same subject-matter. This requirement of “same subject-matter” was followed in the established case law of the technical boards of appeal regarding the question of “double patenting” (see e.g. T 1391/07, [2.5]; T 877/06 [5]; T 1708/06 [6]; T 469/03 [4.2]).

In the present case, claim 1 of the patent-in-suit requires a treatment in a human being and a dose of 0.1 to 30 micrograms of 13,14-dihydro-17-phenyl-18,19,20-trinor-PGF2alpha-isopropyl ester in 10 to 50 microlitres of the composition. These technical features are not required by any claim of EP 0 364 417 B. It follows that due to these technical distinguishing features the subject-matter of claim 1 of the patent-in-suit is not the same as that of claim 14 of EP 0 364 417 B.

Since EP 0 364 417 B and the patent in suit claim different subject-matter, the question of double patenting cannot arise.

[The opponent] nevertheless referred to the headnote of T 307/03 which stipulates that a double patenting objection can also be raised where subject-matter of the granted claim is encompassed by the subject-matter of the claim later put forward.

The Board, however, sees no reason to depart from the mandatory requirement of “same subject-matter” invoked in the decisions G 1/05 and G 1/06 and in the established case law in relation with double patenting to claims on the mere ground that the subject-matter of the claim later put forward is already encompassed in a granted claim.

This argument of the [opponent] must thus be rejected.

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