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Official Journal #7, 2009

In this OJ a publication of Board of Appeal decision T 307/03 relating to the subject of double patenting.


I. The principle of prohibition of double patenting, namely that the inventor (or his successor in title) has a right to the grant of one and only one patent from the European Patent Office for a particular invention as defined in a particular claim is applicable under the EPC, and can be deduced from the provision of Article 60 EPC stating "The right to a European patent shall belong to the inventor or his successor in title" (see point 2.1).

II. Decision T 587/98 (OJ EPO 2000, 497) to the effect (see its point 3.6) that there is no basis in the EPC prohibiting "conflicting claims" not followed (see point 2.7).

III. A double patenting objection can be raised also where the subject-matter of the granted claim is encompassed by the subject-matter of the claim later put forward, that is where the applicant is seeking to re-patent the subject-matter of the already granted patent claim, and in
addition to obtain patent protection for other subject-matter not claimed in the already granted patent. In particular, where the subject matter which would be double patented is the preferred way of carrying out the invention both of the granted patent and of the pending application
under consideration, the extent of double patenting cannot be ignored as de minimis. To avoid the objection of double patenting the claims of the pending application should be confined to the other subject-matter that is not already patented, to allow the examination procedure to focus on whether a claim to this other subject-matter meets the requirements of the EPC (see points 5.2 to 5.4).

The Board of Appeal found a basis for this decision (which is not in line with T 587/98) in Article 60. This in turn has created an interesting discussion earlier this year on (among others) the IPKat Blog, see here. In particular, see the comment by Derk Visser (Author of "The Annotated EPC").

OJ 2009, 434

The EPO will in Opposition Proceedings no longer automatically transmit copies of documents specified as patent documents. If oral proceedings are to take place,parties are advised to check the electronic file via the Register Plus online service in advance of the hearing to ensure they are in possession of all relevant documents.

(Not so very relevant for the EQE probably)

Not in OJ #7, 2009 but published on the website :

The German Patent and Trademark Office will be closed on the following days (in addition to what has been published in OJ 2009, 72)

28 December 2009
29 December 2009
30 december 2009

Under Rule 134(1) EPC, periods expiring on a day on which at least one of the filing offices of the EPO is not open for receipt of documents are extended to the first day thereafter on which all the filing offices are open for receipt of documents.

Under Rule 134(3) EPC, the provisions of Rule 134(1) EPC apply mutatis mutandis where acts are performed with the central industrial property office or other competent authority of a contracting state.

All the above will be copied to the OJ 2009 Summary and published soon on this website.

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