In the decision T2563/11 the Boards of Appeal of the European patent had to deal with a divisional application having identical claims to a parent application (on which in the meanwhile a patent had been granted), but having differences in the specification – which, in the opinion of the applicant, lead to a different scope of protection vis-à-vis the scope of the granted parent.
The Board decided that, for the double patenting prohibition, it is the “matter for which protection is sought” defined in the claims (in line with the wording of Art. 84 EPC) which matters, but not the scope of protection, or more exactly “the extent of the protection conferred by a European patent” as defined in Art. 69 EPC. According to Art. 69EPC the “extent of the protection” shall be determined by the claims, however wherein the description and drawings shall be used to interpret the claims.
The Board thus clarified that for this reason the underlying doctrine shall better not be called “double protection prohibition”, but rather “double patenting prohibition”.
The Board fully recognized that there can be differences between “the extent of the protection” (typically called also scope of protection) and “the matter for which protection is sought defined by the claims”. According to the Board, typically the scope of protection will be broader than the matter defined by the claims.
Actually, “the matter for which protection is sought” and defined by the claims plays a much bigger role at the EPO proceedings than the scope of protection:
- For Art. 84 EPC (“clarity)” the matter for which protection is sought defined by the claims is relevant. This is in contrast to “lack of clarity” objections sometimes found in examining reports issued by the EPO and referring to the fact that allegedly the scope of protection of a claim is not clear in view of incoherencies with the specification.
- As to Art. 123(2) EPC (“due support in the original filed documents”) it is the “subject-matter of the European patent application or European patent”, which shall not extend beyond “the content of the application as filed”. “Subject-matter of a European patent application or European patent” seems to be a definition which is neither exactly identical to “scope of protection” nor to “the matter for which protection is sought” defined by the claims. Typically, in EPO opposition proceedings it is decided whether an amended claim covers embodiments, which had not been covered prior to the amendment, which indicates that there is at least a partial overlap between “subject-matter” and “scope of protection”. The “content of the application as filed” typically is read as relating to the disclosure of the application as filed.
- For Art. 87 EPC (“Priority right”), the priority can only be claimed “for the same invention”. According to the decision of the Enlarge Board of Appeal G2/98 the “subject-matter of the claim” of the later application has to be compared with the “previous application as a whole”. “Subject-matter of the claim” seems to refer to the “matter for which protection is sought” according to Art. 84 EPC, and not to the scope of protection according to Art. 69 EPC.
- There is actually one article in the EPC, which clearly speaks of the scope of protection, which is Art. 123 (3) EPC, according to which a European patent (thus after grant, and in limitation or opposition proceedings) shall not be amended in such a way as to extend the protection it confers. This clearly refers to Art. 69 EPC.
Thus, the European Patent Convention and the practice developed by the Boards of Appeal (such as for example the double patent prohibition doctrine) make subtle differences between “subject-matter” of a European patent application or patent, the scope of protection, and “the matter for which protection is sought”.