T 1423/07 - Double Patenting is Possible According to the EPC

The recent decision T 1423/07 of the EPO Board of Appeal disagreed with the opinion of the Examining Division, according to which a second application cannot be granted on the grounds that the claims on file were identical to the claims granted in the first application from which priority was claimed (see also here and here). For example, German patent law already prevents double patenting by an earlier application and an application claiming its priority at an early stage of the proceedings, since according to § 40 (5) PatG the earlier application from which priority is claimed is deemed withdrawn already with the declaration of priority. On the other hand, US Patent Law knows two types of double patenting objections to be risen during the proceedings up to grant. One is the non-statutory (case law) "obviousness type double patenting objection", which is based on the judicial doctrine according to which a prolongation of the patent term has to be prevented by prohibiting claims in another patent that are obvious variations on claims of the granted patent. The other is the "same invention type double patenting objection" based on 35 U.S.C. Sec. 101, which states that an inventor "may obtain a [i.e. one] patent" only. While the former can be overcome by a terminal disclaimer declaration which disclaims the term of the later-issuing patent that extends beyond the term of the earlier patent, the latter objection may be tackled by joining all claims that relate to the same invention in one single application. In Europe, the EPO Board of Appeal held in May 2000 in case T 587/98 that
there is no provision in the EPC (not even implicitly) which prohibits in a divisional application an independent claim which is related to an independent claim in the parent application in such a way that the parent claim includes all the features of the divisional claim combined with an additional feature ...
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