T 0318/14 (Double patenting) of 07.02.2019

European Case Law Identifier: ECLI:EP:BA:2019:T031814.20190207
Date of decision: 7 February 2019
Case number: T 0318/14
Petition for review of: -
Application number: 10718590.2
IPC class: A61P 1/12 A61K 35/74 A61P 37/08 A23L 1/30
Language of proceedings: English
Distribution: Published in the EPO's Official Journal (A)
Download: Decision in English
OJ versions: German
English
French
Other decisions for this case: T 0318/14 Double patenting 2021-11-24
Abstracts for this decision: -
Application title: PREVENTION AND TREATMENT OF ALLERGIC DIARRHOEA
Applicant name: Société des Produits Nestlé S.A.
Opponent name: -
Board: 3.3.01
Headnote: -
Relevant legal provisions: European Patent Convention Art 125 European Patent Convention Art 139(3)European Patent Convention Art 54(2)European Patent Convention Art 54(3)European Patent Convention Art 60(1)European Patent Convention Art 63(1)European Patent Convention Art 64(1)European Patent Convention Art 67(1)European Patent Convention Art 67(2)European Patent Convention Art 76(1)European Patent Convention Art 89 European Patent Convention Art 97(2)Vienna Convention on the Law of Treaties (1969) Art 31(2)(a)Vienna Convention on the Law of Treaties (1969) Art 31(2)(b)Vienna Convention on the Law of Treaties (1969) Art 31(3)(a)Vienna Convention on the Law of Treaties (1969) Art 31(3)(b)Vienna Convention on the Law of Treaties (1969) Art 32
Keywords: Referral to the Enlarged Board of Appeal - (yes)
Catchword: The following questions are referred to the Enlarged Board of Appeal:
1. Can a European patent application be refused under Article 97(2) EPC if it claims the same subject-matter as a European patent which was granted to the same applicant and does not form part of the state of the art pursuant to Article 54(2) and (3) EPC?
2.1 If the answer to the first question is yes, what are the conditions for such a refusal, and are different conditions to be applied depending on whether the European patent application under examination was filed
a) on the same date as, or
b) as a European divisional application (Article 76(1) EPC) in respect of, or
c) claiming the priority (Article 88 EPC) in respect of a European patent application on the basis of which a European patent was granted to the same applicant?
2.2 In particular, in the last of these cases, does an applicant have a legitimate interest in the grant of a patent on the (subsequent) European patent application in view of the fact that the filing date and not the priority date is the relevant date for calculating the term of the European patent under Article 63(1) EPC?
Cited cases: G 0001/91 G 0001/97 G 0004/98 G 0001/05 G 0001/06 G 0002/10 G 0001/11 G 0002/12 G 0002/13 G 0001/15 J 0005/91 J 0032/95 T 0118/91 T 0080/98 T 0587/98 T 0998/99 T 0015/01 T 0475/02 T 0307/03 T 0411/03 T 0425/03 T 0467/03 T 0468/03 T 0936/04 T 0005/05 T 0579/05 T 0877/06 T 1562/06 T 1708/06 T 1391/07 T 1423/07 T 0051/08 T 0616/08 T 2402/10 T 2461/10 T 2563/11 T 0879/12 T 1780/12 T 0696/16 T 1252/16
Citing cases: G 0004/19 T 1252/16

Order

For these reasons it is decided that:

The following questions are referred to the Enlarged Board of Appeal:

1. Can a European patent application be refused under Article 97(2) EPC if it claims the same subject-matter as a European patent which was granted to the same applicant and does not form part of the state of the art pursuant to Article 54(2) and (3) EPC?

2.1 If the answer to the first question is yes, what are the conditions for such a refusal, and are different conditions to be applied depending on whether the European patent application under examination was filed

a) on the same date as, or

b) as a European divisional application (Article 76(1) EPC) in respect of, or

c) claiming the priority (Article 88 EPC) in respect of a European patent application on the basis of which a European patent was granted to the same applicant?

2.2 In particular, in the last of these cases, does an applicant have a legitimate interest in the grant of a patent on the (subsequent) European patent application in view of the fact that the filing date and not the priority date is the relevant date for calculating the term of the European patent under Article 63(1) EPC?