Limitation and revocation procedures before the European Patent Office
Encyclopedia
In European patent law
, the limitation and revocation procedures before the European Patent Office
(EPO) are post-grant, ex parte
, administrative procedures allowing any European patent to be centrally limited by an amendment of the claim
s or revoked, respectively. These two procedures were introduced in the recently revised text of the European Patent Convention
(EPC), i.e. the so-called EPC 2000
, which entered into force on December 13, 2007.
The new Articles 105a, 105b and 105c EPC (of the EPC 2000) form the legal basis of the limitation and revocation procedures. These procedures are applicable since December 13, 2007 to all European patents, whether already granted or granted after that date.
), it was possible for the proprietor of a European patent to oppose
its own patent with the aim of centrally limiting it. Decision G 9/93 however deprived patent proprietors of this opportunity. This means that, after G 9/93, the only possibility for the proprietor of a European patent to voluntarily limit the scope conferred by its patent (e.g. for instance to strengthen the patent in view of some newly discovered prior art
documents and/or in advance of envisaged litigation) was to request such limitation at the national level, i.e. before the national patent offices or competent courts of the Contracting States, if permitted. The EPC of 1973 made no provision for a limitation procedure, and a fortiori no provision for centrally limiting a European patent before the EPO after the nine-month period for filing an opposition (nine months as from the date of grant of the European patent).
The travaux préparatoires
laid out the rationale
for a limitation procedure:
of the European patent. According to the Guidelines, the request can even be filed after expiry of the patent.
However, the request may not be filed while opposition proceedings
are pending. Precedence, i.e. priority, is always given to opposition proceedings. This prevents limitation from occurring where an opposition has already been lodged. If, at the time of filing a request for limitation or revocation, opposition proceedings are pending, the request "shall be deemed
not to have been filed (see section "Special cases" - below - for the case, "likely to be infrequent in practice", where an opposition is filed "following the valid lodging of a request for limitation or revocation" ).
The request must be filed with the EPO and the procedure is subject to the payment of a fee. The amount of the fee is 1000 euro
s for a request for limitation and 450 Euros for a request for revocation. The fee is due on the date that the request is filed. A reduction of the fee is allowed if the request is filed in an "admissible non-EPO language" as well as in an EPO official language in translation.
If these requirements are not met, the requester is invited to correct the deficiencies and, if this is not done, the Examining Division "shall reject the request as inadmissible".
The responsibility for limitation or revocation proceedings, i.e. deciding on requests for limitation or revocation, rests with the Examining Division. The process of examining an admissible request for revocation differs from the process of examining an admissible request for limitation.
As soon as a request for revocation is found to be admissible, the patent is revoked by the Examining Division.
In contrast, in order to reach a decision on the allowability of a request for limitation, the Examining Division establishes whether the requested amendment of the claims actually limits the patent or "whether it is designed to protect something else". It also establishes whether the amended claims meet the requirements of (clarity, conciseness and support of the claims) and (the amendments can not add subject-matter going beyond the content of the application as filed
and the scope of protection cannot be extended after grant). When examining a request for limitation, "the EPO does not examine whether
The fact that the patentability of the limited patent is not checked by the EPO relies on the fact that the originally granted patent was valid when granted. Issues may however arise as a result of the absence of any check on patentability in rare cases where the priority right is endangered by the limitation.
Upon approval of the amended claims by the Examining Division, a fee must be paid and the amended claims must be translated in the two official languages of the EPO other than the language of the proceedings, within a period of three months. In addition, complete translations of the patent as limited, in an official language of some countries may need to be filed in the countries prescribing it.
The request for limitation or revocation has effect ab initio
. This means that the limitation or revocation has effect as from the filing date of the patent application which led to the patent, rather than from the date of the decision on the limitation or revocation.
Decisions of the Examining Divisions in limitation and revocation proceedings are open to appeal
.
A requester may request to restrict the claims with respect to one or more, but not all, Contracting States. The limitation would then result in claims being different in different Contracting States. This may however only be done in some special cases, one of them being in order to avoid conflict with national prior rights (a national prior right is a national patent filed before the filing date - or priority date
- of the European patent subject to the limitation procedure but published after the filing date - or priority date - of the European patent).
) to limit European patent . The first B3 publication of a European patent specification after limitation proceedings was published on July 23, 2008 (as EP 0 591 199 B3). In the first year following the entry into force of the EPC 2000, 83 requests for limitation were filed. Of these, 72 were filed after the nine-month opposition period and 11 during the nine-month opposition period.
According to the blog Tufty the Cat, "[the] average time taken between a request for limitation and the date on which the request is allowed is 202 days, with a standard deviation of 151 days".
European patent law
European patent law covers a wide range of legislations including national patent laws, the Strasbourg Convention of 1963, the European Patent Convention of 1973, and a number of European Union directives and regulations....
, the limitation and revocation procedures before the European Patent Office
European Patent Organisation
The European Patent Organisation is a public international organisation created in 1977 by its contracting states to grant patents in Europe under the European Patent Convention of 1973...
(EPO) are post-grant, ex parte
Ex parte
Ex parte is a Latin legal term meaning "from one party" .An ex parte decision is one decided by a judge without requiring all of the parties to the controversy to be present. In Australian, Canadian, U.K., Indian and U.S...
, administrative procedures allowing any European patent to be centrally limited by an amendment of the claim
Claim (patent)
Patent claims are the part of a patent or patent application that defines the scope of protection granted by the patent. The claims define, in technical terms, the extent of the protection conferred by a patent, or the protection sought in a patent application...
s or revoked, respectively. These two procedures were introduced in the recently revised text of the European Patent Convention
European Patent Convention
The Convention on the Grant of European Patents of 5 October 1973, commonly known as the European Patent Convention , is a multilateral treaty instituting the European Patent Organisation and providing an autonomous legal system according to which European patents are granted...
(EPC), i.e. the so-called EPC 2000
EPC 2000
The EPC 2000 or European Patent Convention 2000 is the version of the European Patent Convention as revised by the Act Revising the Convention on the Grant of European Patents signed in Munich on November 29, 2000. On June 28, 2001, the Administrative Council of the European Patent Organisation...
, which entered into force on December 13, 2007.
The new Articles 105a, 105b and 105c EPC (of the EPC 2000) form the legal basis of the limitation and revocation procedures. These procedures are applicable since December 13, 2007 to all European patents, whether already granted or granted after that date.
Rationale
Until a decision of the Enlarged Board of Appeal of the EPO of 1994, namely G 9/93 (reverting earlier decision of the same instance of 1985, namely G 1/84G 1/84
G 1/84 is a decision of the Enlarged Board of Appeal of the European Patent Office , which was issued on July 24, 1985. The Board held in this decision that:The decision was however overruled by the later decision of the Enlarged Board G 9/93, where it was held that a European patent cannot be...
), it was possible for the proprietor of a European patent to oppose
Opposition procedure before the European Patent Office
The opposition procedure before the European Patent Office is a post-grant, contentious, inter partes, administrative procedure intended to allow any European patent to be centrally opposed...
its own patent with the aim of centrally limiting it. Decision G 9/93 however deprived patent proprietors of this opportunity. This means that, after G 9/93, the only possibility for the proprietor of a European patent to voluntarily limit the scope conferred by its patent (e.g. for instance to strengthen the patent in view of some newly discovered prior art
Prior art
Prior art , in most systems of patent law, constitutes all information that has been made available to the public in any form before a given date that might be relevant to a patent's claims of originality...
documents and/or in advance of envisaged litigation) was to request such limitation at the national level, i.e. before the national patent offices or competent courts of the Contracting States, if permitted. The EPC of 1973 made no provision for a limitation procedure, and a fortiori no provision for centrally limiting a European patent before the EPO after the nine-month period for filing an opposition (nine months as from the date of grant of the European patent).
The travaux préparatoires
Travaux préparatoires
The travaux préparatoires are the official record of a negotiation. Sometimes published, the "travaux" are often useful in clarifying the intentions of a treaty or other instrument...
laid out the rationale
Rationale
A rationale is a liturgical vestment worn by clergy, in particular by Bishops, in the Roman Catholic Church which uses full vestments. It is humeral ornament, a counterpart to the Pallium, and is worn over the chasuble...
for a limitation procedure:
- "Limitation proceedings would enable patentees to narrow down the protection conferred by a patent post-grant by means of a simple, quick and inexpensive administrative procedure. For example, it may be necessary to limit a granted patent if, because of prior art which was not known during the examination proceedingsGrant procedure before the European Patent OfficeThe grant procedure before the European Patent Office is an ex parte, administrative procedure, which includes the filing of a European patent application, the examination of formalities, the establishment of a search report, the publication of the application, its substantive examination, and the...
or prior national rights not taken into account in these proceedings, the extent of the protection conferred is too great. Using the limitation procedure, patent proprietors may themselves reduce the extent of the protection claimed in a manner which is binding, and thus generally preclude disputes over the validity of a patent. Postgrant limitation is also in the public interest, because it limits the protection claimed by the patentee with effect for the general public. This creates legal certaintyLegal certaintyLegal certainty is a principle in national and international law which holds that the law must provide those subject to it with the ability to regulate their conduct. Legal certainty is internationally recognised as a central requirement for the rule of law....
and facilitates access by competitors to the freely available prior art."
Request
A request for limitation or revocation can only be filed by the proprietor(s) of the patent. The request may be filed at any time throughout the entire termTerm of patent
The term of a patent is the maximum period during which it can be maintained into force. It is usually expressed in number of years either starting from the filing date of the patent application or from the date of grant of the patent. In most patent laws, renewal annuities or maintenance fees have...
of the European patent. According to the Guidelines, the request can even be filed after expiry of the patent.
However, the request may not be filed while opposition proceedings
Opposition procedure before the European Patent Office
The opposition procedure before the European Patent Office is a post-grant, contentious, inter partes, administrative procedure intended to allow any European patent to be centrally opposed...
are pending. Precedence, i.e. priority, is always given to opposition proceedings. This prevents limitation from occurring where an opposition has already been lodged. If, at the time of filing a request for limitation or revocation, opposition proceedings are pending, the request "shall be deemed
Legal fiction
A legal fiction is a fact assumed or created by courts which is then used in order to apply a legal rule which was not necessarily designed to be used in that way...
not to have been filed (see section "Special cases" - below - for the case, "likely to be infrequent in practice", where an opposition is filed "following the valid lodging of a request for limitation or revocation" ).
The request must be filed with the EPO and the procedure is subject to the payment of a fee. The amount of the fee is 1000 euro
Euro
The euro is the official currency of the eurozone: 17 of the 27 member states of the European Union. It is also the currency used by the Institutions of the European Union. The eurozone consists of Austria, Belgium, Cyprus, Estonia, Finland, France, Germany, Greece, Ireland, Italy, Luxembourg,...
s for a request for limitation and 450 Euros for a request for revocation. The fee is due on the date that the request is filed. A reduction of the fee is allowed if the request is filed in an "admissible non-EPO language" as well as in an EPO official language in translation.
Admissibility
In addition, the request should be filed in writing and should contain:- "particulars of the proprietor of the European patent making the request (the requester)";
- "an indication of the [EPC] Contracting States for which the requester is the proprietor of the patent";
- "the number of the patent whose limitation or revocation is requested";
- "a list of the Contracting States in which the patent has taken effect";
- "where appropriate, the names and addresses of the proprietors of the patent for those Contracting States in which the requester is not the proprietor of the patent, and evidence that the requester is entitled to act on their behalf in the proceedings";
- "where limitation of the patent is requested, the complete version of the amended claims and, as the case may be, of the amended description and drawings;" and
- where the requester has appointed a representativeRepresentation before the European Patent OfficeThe European Patent Convention , the multilateral treaty providing the legal system according to which European patents are granted, contains provisions regarding whether a natural or juristic person needs to be represented in proceedings before the European Patent Office .- General rule and...
, his name and the address of his place of business.
If these requirements are not met, the requester is invited to correct the deficiencies and, if this is not done, the Examining Division "shall reject the request as inadmissible".
Particulars of the proceedings and effects
The subject of limitation or revocation proceedings is the European patent as granted or as amended in opposition or limitation proceedings before the EPO. Therefore, a European patent may be subject to several successive limitation proceedings.The responsibility for limitation or revocation proceedings, i.e. deciding on requests for limitation or revocation, rests with the Examining Division. The process of examining an admissible request for revocation differs from the process of examining an admissible request for limitation.
As soon as a request for revocation is found to be admissible, the patent is revoked by the Examining Division.
In contrast, in order to reach a decision on the allowability of a request for limitation, the Examining Division establishes whether the requested amendment of the claims actually limits the patent or "whether it is designed to protect something else". It also establishes whether the amended claims meet the requirements of (clarity, conciseness and support of the claims) and (the amendments can not add subject-matter going beyond the content of the application as filed
Amendments under the European Patent Convention
Article 123 of the European Patent Convention relates to the amendments under the EPC, i.e. the amendments to a European patent application or patent, and notably the conditions under which they are allowable...
and the scope of protection cannot be extended after grant). When examining a request for limitation, "the EPO does not examine whether
- the aim of the limitation (e.g. delimitation with respect to a particular prior artPrior artPrior art , in most systems of patent law, constitutes all information that has been made available to the public in any form before a given date that might be relevant to a patent's claims of originality...
) is achieved, or - the subject-matter of the limited patent is still patentable..." (this second point is intended to guarantee a quick decision ).
The fact that the patentability of the limited patent is not checked by the EPO relies on the fact that the originally granted patent was valid when granted. Issues may however arise as a result of the absence of any check on patentability in rare cases where the priority right is endangered by the limitation.
Upon approval of the amended claims by the Examining Division, a fee must be paid and the amended claims must be translated in the two official languages of the EPO other than the language of the proceedings, within a period of three months. In addition, complete translations of the patent as limited, in an official language of some countries may need to be filed in the countries prescribing it.
The request for limitation or revocation has effect ab initio
Ab initio
ab initio is a Latin term used in English, meaning from the beginning.ab initio may also refer to:* Ab Initio , a leading ETL Tool Software Company in the field of Data Warehousing.* ab initio quantum chemistry methods...
. This means that the limitation or revocation has effect as from the filing date of the patent application which led to the patent, rather than from the date of the decision on the limitation or revocation.
Decisions of the Examining Divisions in limitation and revocation proceedings are open to appeal
Appeal procedure before the European Patent Office
Decisions of the first instances of the European Patent Office can be appealed, i.e. challenged, before the Boards of Appeal of the EPO, in a judicial procedure , as opposed to an administrative procedure. These boards act as the final instances in the granting and opposition procedures before the...
.
Special cases
If opposition proceedings are initiated following the valid lodging of a request for limitation or revocation, the following applies:- "if revocation is requested, such proceedings are to continue and the patent may be revoked";
- "if limitation of the patent is requested, limitation proceedings are terminated". The limitation fee is reimbursed in this case.
A requester may request to restrict the claims with respect to one or more, but not all, Contracting States. The limitation would then result in claims being different in different Contracting States. This may however only be done in some special cases, one of them being in order to avoid conflict with national prior rights (a national prior right is a national patent filed before the filing date - or priority date
Priority right
In patent, industrial design rights and trademark laws, a priority right or right of priority is a time-limited right, triggered by the first filing of an application for a patent, an industrial design or a trademark respectively...
- of the European patent subject to the limitation procedure but published after the filing date - or priority date - of the European patent).
Relation with national proceedings
"The European limitation procedure does not ... take precedence over national proceedings (revocation proceedings in particular). Where parallel cases do occur, the national proceedings can be stayed or continued in accordance with national law or practice. Where national proceedings resulting in limitation have already been concluded, the limitation may be extended to further contracting states via European limitation proceedings (provided the requirements of the EPC are met). [In addition,] limitation of a European patent in proceedings before the EPO does not preclude further limitation in national proceedings."Statistics
One of the first requests for limitation was filed by Hewlett Packard by fax on December 13, 2007 (at about 7.30 am UTC or 8.30 am CETCentral European Time
Central European Time , used in most parts of the European Union, is a standard time that is 1 hour ahead of Coordinated Universal Time . The time offset from UTC can be written as +01:00...
) to limit European patent . The first B3 publication of a European patent specification after limitation proceedings was published on July 23, 2008 (as EP 0 591 199 B3). In the first year following the entry into force of the EPC 2000, 83 requests for limitation were filed. Of these, 72 were filed after the nine-month opposition period and 11 during the nine-month opposition period.
According to the blog Tufty the Cat, "[the] average time taken between a request for limitation and the date on which the request is allowed is 202 days, with a standard deviation of 151 days".