Zusammenfassung von EPC2000 Art 125 für die Entscheidung T1128/19 vom 10.03.2023

T 1128/19 was an appeal against the decision of the examining division to refuse the European patent application. The application was a divisional application of an earlier application which was subsequently granted (the parent patent). The examining division had held that the main request and auxiliary requests 1 to 3 were not allowable under Art. 97(2) EPC together with Art. 125 EPC because they contravened the principle of prohibition of double patenting with respect to the parent patent. The board observed that, since the filing of the appeal, decision G 4/19 had been issued. In this decision, the Enlarged Board had held that: "1. A European patent application can be refused under Articles 97(2) and 125 EPC if it claims the same subject-matter as a European patent which has been granted to the same applicant and does not form part of the state of the art pursuant to Article 54(2) and (3) EPC. 2. The application can be refused on that legal basis, irrespective of whether it a) was filed on the same date as, or b) is an earlier application or a divisional application (Article 76(1) EPC) in respect of, or c) claims the same priority (Article 88 EPC) as the European patent application leading to the European patent already granted". The board stated that the parent patent had been granted to the same applicant as the applicant of the application under appeal. To decide if the application under appeal had been correctly refused because it contravened the principle of prohibition of double patenting, the board had to determine whether it claimed the same subject- matter as the parent patent. According to the board, claim 1 of the main request was a combination of claims 1 and 4 and a single embodiment (aa) from claim 5 of the parent patent. The wording of claim 1 of the application under appeal differed from that of the above-mentioned claims of the parent patent in that it specified that the first binding domain "is an antigen-interaction site". The subject-matter of claim 1 of the main request was an explicit alternative defined in the claims of the parent patent. The appellant had submitted that claim 1 of the main request related to an antibody whereas claim 1 of the parent patent was not defined to be an antibody. In other words, the subject- matter of claim 1 was alleged to be a narrower selection from the subject-matter of claim 1 of the parent patent. The board did not find this argument convincing because the claim was for "a bispecific single chain antibody molecule". There was no technical reason to differentiate between an antibody and an antibody molecule, since it went without saying that an antibody was a molecule. The same considerations applied to claim 1 of auxiliary request 1, which was identical to claim 1 of the main request. In the board's opinion, claim 1 of auxiliary request 2 differed from claim 1 of the main request in that the subject-matter (and wording) of granted dependent claims 2 and 3 had been incorporated into claim 1. This subject-matter was therefore also an explicit embodiment of the granted claims. Claim 1 of auxiliary request 3 differed from claim 1 of the parent patent in that embodiments from dependent claim 7 had been incorporated. In addition, as was the case for claim 1 of the main request, the wording "which is an antigen-interaction site" had been added. The board concluded that the main request and auxiliary requests 1 to 3 were not allowable because they claimed the same subject-matter as claimed in the parent patent.