OJ EPO 2020, A66 - Communication from the Enlarged Board of Appeal concerning case G 4/19

In accordance with Article 112(1)(a) EPC, Technical Board of Appeal 3.3.01 has referred the following points of law to the Enlarged Board of Appeal by interlocutory decision of 7 February 2019 in case T 318/14:

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?

The text of the referral in English is available on the EPO website under http://www.epo.org/law-practice/case-law-appeals/recent/t140318ex1.html.

The Enlarged Board of Appeal considering the referral will be composed as follows: C. Josefsson (Chairman), T. Bokor, W. van der Eijk, J. Karttunen, M.-C. Courboulay, G. Eliasson, A. Ritzka.

Third parties are hereby given the opportunity to file written statements in accordance with Article 10 of the Rules of Procedure of the Enlarged Board of Appeal (OJ EPO 2015, A35) in one of the official languages of the EPO (English, French or German).

To ensure that any such statements can be given due consideration they should be filed by 1 October 2020 with the Registry of the Enlarged Board of Appeal, quoting case number G 4/19, and should be marked for the attention of Mr Nicolas Michaleczek (EBAamicuscuriae@epo.org).


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