OJ EPO 2020, A20 - Notice from the European Patent Office dated 10 February 2020 concerning the staying of proceedings due to referral G 4/19

1. Referral G 4/19 ("Double patenting") is pending before the Enlarged Board of Appeal. The referring Board seeks to clarify, first of all, the legal basis for refusal of a European patent application where the applicant has already obtained a European patent for the same subject-matter. Its second question concerns the conditions to be applied in the various different scenarios involving conflicting applications, i.e. European applications filed on the same date, cases of divisional applications or cases of internal priority. It also asks whether, in the last of those scenarios, the applicant has 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. The three questions referred to the Enlarged Board of Appeal can be found in decision T 318/14.

2. The President of the EPO has decided that, in view of the potential impact of the referral, all proceedings before EPO examining divisions (including limitation proceedings) and opposition divisions in which the decision depends entirely on the outcome of the referral will be stayed ex officio until the Enlarged Board of Appeal issues its decision.

3. In particular, this concerns cases in which:

− the claims of the application under examination define the same subject-matter as a European patent which was previously granted to the same applicant

− the application under examination and the previous European patent at least overlap in their territorial scope of protection

− the application under examination and the application on the basis of which the previous European patent was granted to the same applicant have the same effective date, i.e. in one of the following situations:

− both applications were filed on the same date

− one was filed as a divisional application of the other (Article 76(1) EPC)

− one validly claims the priority of the other (Articles 87 and 88 EPC).

These criteria apply by analogy in opposition and limitation proceedings.

4. If proceedings are stayed, the examining division or the opposition division concerned will inform the parties accordingly (see Guidelines for Examination at the EPO, E-VII, 3). At the same time, it will withdraw any communications setting them time limits to react, and will despatch no further such communications until the Enlarged Board of Appeal has given its decision, whereupon a communication will be issued concerning the resumption of the proceedings.

5. The present notice applies immediately but solely to those cases affected by referral G 4/19.


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