Derk Visser on Double Patenting
The IPKat commented a few days ago on a recent, as yet unpublished, decision of the EPO Board of Appeal, in which the Board considered that Article 60 EPC provided basis for prohibition of double patenting. This prompted a few comments, including one apparently made by Derk Visser, a name which will be well known at least to all EQE candidates. Derk's comment is worth reproducing, if only for the benefit of those who do not keep track via the IPKat's comment feed. He writes:
The IPKat thanks Derk for his contribution, and wonders what led this particular Board to arrive at their apparently unsound line of reasoning, particularly when they had nearly 2 years to consider it. Is there more to it than meets the eye, or is this simply another 'rogue' decision that will be quietly swept under the carpet (or, perhaps, overturned by the Enlarged Board) in due course?
"The issue of double patenting was extensively discussed in the preparatory documents of the EPC 1973. Since double patenting was regarded as an issue relating to patents, not to patent applications, and the EPC did not relate to the maintenance of patents, it was left to the contracting states to permit or prohibit simultaneous protection (Travaux Préparatoires 1969, BR/7 e/69, p. 8 point 17). The Inter-Governmental Conference in 1972 endorsed this view, a large majority of the interested circles being in favour of this (BR/168/72). As a consequence, the EPC does intentionally not contain a prohibition on double patenting.
The board of the recent decision T307/03 was probably unaware of the above (see reason 2.3 of the decision). Hence, its attempt and probably any attempt, to base a prohibition of double patenting on the present EPC results a contortion of the law.
Use of Art.60 as a basis for prohibiting double patenting in the recent decision T307/03 is legally not sound, because the provision relates to who has the right to a patent, not to the constitution of the right, as already stated in the first comment of this blog. The same applies to Art.58, which relates to who may file.
Art.125 cannot be used to introduce a prohibition on double patenting in the EPC, because the text of the provision makes abundantly clear that it relates to procedural matters only, not to substantive issues such as double patenting (see also T587/98 r.3.6). The statement on double patenting in relation with Art.125 in the Munich Conference, cited by Erik in the above contribution, shows that the UK delegation could benefit from some training in the EPC.
Art.139(3) is not intended as a general prohibition on double patenting. Its purpose is to avoid that for a single invention both a European and a national patent is granted. It was intended as a first step towards abolition of national patents (Travaux Préparatoires 1962, 3076/IV/62-D, p. 114a).
The sections C-IV,7.4 and C-IV,9.1.6 of the Guidelines are no basis for refusing an application on the ground of double patenting (T587/98 r.3.5 and 3.6).
The statement in decision G1/05 r.13.4 regarding a refusal on the ground of double protection as being non-objectionable, appears to be an oversight on the part of the EBoA.
The legislator clearly missed the opportunity of the EPC2000 to introduce the prohibition in the law. In spite of the clear statements of the legislator that double protection should be dealt with at a national level, most national laws do not have a provision to this end. It is surprising that such a broadly supported principle has not been codified at both international and national level. Hence, we will probably have to put up with case law stretching provisions far beyond the intention of the legislator."
The IPKat thanks Derk for his contribution, and wonders what led this particular Board to arrive at their apparently unsound line of reasoning, particularly when they had nearly 2 years to consider it. Is there more to it than meets the eye, or is this simply another 'rogue' decision that will be quietly swept under the carpet (or, perhaps, overturned by the Enlarged Board) in due course?