5.4 Double patenting 

As acknowledged by the Enlarged Board, the prohibition on double patenting is applicable under Art. 125 (G 4/19). It is a principle of procedural law generally recognised in the majority of contracting states that two patents cannot be granted to the same applicant with claims directed to the same subject-matter.

In line with that, a European patent application can be refused under Art. 97(2) if it claims the same subject-matter as a European patent that has been granted to the same applicant and does not form part of the state of the art pursuant to Art. 54(2) and Art. 54(3). This would especially be the case in the following typical situations: two applications filed on the same day, parent and divisional applications, or an application and its priority application.

An applicant can be allowed to proceed with an application that has two applications with the same description as a patent already granted to them as long as it does if they do not claim the same subject-matter (see also T 2461/10). However, when, for example, the subject-matter of claim 1 in an application is the same as that of a dependent claim in a granted patent held by the same applicant, an objection of double patenting will be raised (see T 1128/19). Where two or more European applications from the same applicant designate the same state or states and their claims have the same filing or priority date and relate to the same invention, the applicant must amend one or more of the applications so that the subject-matter of their claims is no longer identical the same, withdraw overlapping designations or choose which one of those applications is to proceed to grant. Otherwise, once one of the applications has been granted, the others will be refused under Art. 97(2) in conjunction with Art. 125 (G 4/19). If the claims of those applications only partially overlap, no objection should be raised (see T 877/06). If two applications with the same effective date are received from two different applicants, each must be allowed to proceed as though the other did not exist.