Zusammenfassung von Article 13(2) RPBA für die Entscheidung T0717/23 vom 24.02.2026

In T 717/23, during the oral proceedings before the board, the opponent raised, for the first time in the appeal proceedings, an objection of double patenting. It argued that the scope of claim 1 of auxiliary request 6 was identical, at least in part, to that of the patent that resulted from the parent application (the "parent patent"). In line with the prohibition of double patenting, the proprietor should not be allowed to request a patent based on the same subject-matter as that of the parent patent, even if, as in this case, the parent patent had later been revoked. The board noted that the examining division had initially considered the subject-matter of claim 1, which was identical with claim 14 of the patent, to be different from claim 1 of the parent patent, and, for that reason, in compliance with the prohibition of double patenting. The examining division had found the difference to be due to the rotary joint, in present claim 1, not being contactless. However, since the board interpreted the rotary joint as a contactless rotary joint, there was in fact no difference from the claims of the parent patent. The opponent argued that, in such a situation, it had to be possible to address the prohibition of double patenting in appeal proceedings. The opponent added that the issue of double patenting was a formal one that had to be assessed at any time during the appeal proceedings. This constituted exceptional circumstances within the meaning of Art. 13(2) RPBA. The board did not admit the objection of double patenting into the appeal proceedings under Art. 13(2) RPBA. Raising such an objection for the first time during the oral proceedings before the board constituted an amendment of the opponent's appeal case within the meaning of Art. 13(2) RPBA. Contrary to the opponent's submission, this objection was not to be treated differently from any other new objection raised for the first time at such a late stage. In this context, the board noted that, for example, an objection as to the admissibility of the appeal also qualified as an amendment within the meaning of Art. 13(2) RPBA (see T 458/22). The board further observed that, if anything, it was questionable whether an objection of double patenting could be examined in opposition or opposition appeal proceedings at all. In G 4/19, the Enlarged Board did not address opposition proceedings and based the applicability of the prohibition of double patenting in examination proceedings on Art. 97(2) and 125 EPC, referring to the preparatory documents to the EPC and the legislator's intention. Since Art. 97(2) EPC was not applicable in opposition proceedings, and Art. 100 EPC provided an exhaustive enumeration of grounds for opposition which did not include double patenting, it seemed to the board that the Enlarged Board's reasoning could not simply be extended to opposition proceedings. The board noted that in the present case, however, this question could be left open. In particular, apart from arguing that an objection of double patenting could per se not be late-filed, which was incorrect, the opponent did not provide any reasons as to why there were exceptional circumstances justifying the admittance of the objection of double patenting at such a late stage of the appeal proceedings. Considering that claim 1 was identical to claim 14 of the patent, the objection should, if at all possible, have already been raised earlier during the appeal proceedings. Furthermore, the objection was, prima facie, not persuasive. Firstly, the issue of double patenting did not even arise in the present case, because the patent resulting from the parent application had been revoked. Under Art. 68 EPC, the effect of that revocation was that the revoked patent was deemed not to have had, from the outset, the effects specified in Art. 64 and 67 EPC. Secondly, the subject-matter which, according to the opponent, was allegedly subject to the prohibition of double patenting, only concerned at the very most claims with an overlapping scope rather than double patenting in the narrower sense (as to this distinction, see G 4/19, point 2 of the Reasons; see also T 2907/19).