Although the EPC does not specifically prohibit double patenting, that is the grant of two patents to the same applicant for the same invention, it is generally accepted that two patents cannot be granted to the same applicant for the same subject matter. However, what is meant by "the same subject matter" has in the past caused some confusion as it too is not defined by the EPC. A recent case before the Technical Board of Appeal (T 1780/12) has shed some light on its meaning.
The Case
The Board of Regents of the University of Texas (UTS) applied for two patents, EP1 and EP2. EP2 was filed as a divisional of EP1 and was subsequently given the same filing date as EP1.
Both EP1 and EP2 related to the use of antibodies to aminophospholipids for cancer treatment.
The claims of EP1 were "Swiss-type claims" which are a form of purpose-limited process claim usually set out in the form "Use of X for the manufacture of a medicament for the treatment of Y"
The divisional application was filed after EPC2000 came into effect. EPC2000 allows for compounds which are useful in a method of treatment by therapy to be drafted as purpose limited product claims. The claims of EP2 contained such claims in the form "X for use in the treatment of Y".
EP1 was granted before EP2 and this forced the EPO to consider whether it could grant EP2 due to the restriction on double patenting. The EPO refused EP2 on the grounds of double patenting which prompted an appeal from UTS. The appeal focused on whether the EPO had neglected to focus on the scope of the claims and had focused too intensely on the language of the claims.
The Appeal
The Technical Board of Appeal (TBA) overturned the decision of the EPO.
The TBA first considered what is meant by the term "subject matter" in the context of double patenting. The TBA held that the subject matter of a claim was determined by two aspects, the category of the claim and its features. Using this analysis, the TBA arrived at the conclusion that EP1 and EP2 related to the same invention. However, for EP1 and EP2 to claim the same subject matter, and therefore fall foul of the objection, it was held that it was not enough for EP1 and EP2 to relate to the same invention.
The TBA held that the questions of what is the "claimed subject matter" in the context of double patenting is to be determined by the scope of protection afforded by the claims. In agreement with another Board of Appeal in T 1391/07, the TBA held that double patenting could only arise where EP1 and EP2 related to notionally the same scope of protection. Double patenting does not arise if the scope of protection conferred by the claims of EP1 and EP2 overlap only partially.
The claims of EP1 were purpose-limited process claims and the claims of EP2 were purpose-limited product claims. It is well accepted that a claim to a process confers less protection than that of a product claim. The scope of the claims of EP1 and EP2 were therefore different and so could not be seen to confer notionally the same scope of protection.
Comment
Whether double patenting is an issue is not merely an assessment of the category of conflicting claims but rather their features and claim scope.
Practically, to avoid double patenting, it is not sufficient merely to consider the wording of the claims and to arrive at a conclusion about protection based upon that wording, but to interpret the wording to arrive at a sensible picture of the scope of protection that is being sought. This assessment ought to be carried out at the time of filing a divisional application since it may be difficult to significantly change the scope of the claims of a divisional application later.
This report comes from European Patent Attorneys at WP Thompson & Co., 55 Drury Lane, London UK. Further details and commentary can be obtained from Gill Smaggasgale, a partner at the firm.
All very sensible. However EP practice does not include terminal disclaimers.
Consider the following scenario:
Patentee sells EP1 with claims directed towards "Use of X for the manufacture of a medicament for the treatment of Y" to company A.Patentee sells EP2 with claims directed towards "X for use in the treatment of Y" to company B.
According to the explanation provided, Company B could sue Company A for infringement.
One has to wonder if that was the intention of the Technical board of appeals.
Posted by: Dr. Sinai Yarus | June 19, 2014 at 06:06 AM
Good morning - have not yet read the decision, but in the dawn of our new day, I was curious as to whether the decision contains any disparaging remarks about scriveners and their ability to claim an invention in a multitude of forms (generally following the US 101 category distinctions)...
(conversely, I wonder if our judicial elite will pick up on the apparent differences that make out the name of the game, as it were)
As usual, I remain...
Posted by: Skeptical | June 19, 2014 at 06:17 AM
Sinai Yarus:
"Patentee sells EP1 with claims directed towards "Use of X for the manufacture of a medicament for the treatment of Y" to company A. Patentee sells EP2 with claims directed towards "X for use in the treatment of Y" to company B. According to the explanation provided, Company B could sue Company A for infringement."
Wrong. You can't sue someone else for owning a patent that overlaps in scope of protection with your patent. Go back to patent law 101.
If B were to use X to manufacture a product for treating Y, as claimed by EP1, then A could sue B, even though the product with its intended use is within the scope of the claims of EP2; and if A manufactures a product for treating Y by including X in the product, as claimed by EP2, B could sue A, even though such use is also within the scope of EP1. That's because a patent confers a right to exclude, not a right to make, use or sell.
Presumably in such a situation, A and B would cross-license.
Of more interest is what happens to C, who now needs to negotiate with both A and B if he wants to use X to make a medicine for treating Y. He will likely run afoul of the scope claims of both patents and need to negotiate with both parties, increasing his transaction costs. The avoidance of such situations was one of the policy considerations in the adoption of terminal disclaimer practice in the USA.
Posted by: Heebie-Jeebies | June 19, 2014 at 07:58 AM