Limitation and revocation procedures before the European Patent Office

In European patent law, the limitation and revocation procedures before the European Patent Office (EPO) are post-grant, "ex parte", OJ 2007, Special edition 4/2007, page 116, item 1. ] administrative [ EPO web site, [http://documents.epo.org/projects/babylon/eponet.nsf/0/17CCA144861F7BC0C12572800038E805/$File/capl_99029_en.pdf "CA/PL 29/99 dated 8.11.1999, Revision of the EPC: limitation procedure"] , in "Travaux préparatoires" 1997-2000, Patent Law Committee documents, item I.4. ] procedures allowing any European patent to be centrally [ EPO web site, [http://documents.epo.org/projects/babylon/eponet.nsf/0/969AC700CF7810F9C1257280004950A5/$File/capl_pv013_en.pdf "CA/PL PV 13, Minutes of the 13th meeting of the Committee on Patent Law"] (Munich, 3 to 6 April 2000), item 137: "As a central procedure, limitation [is] effective in all contracting states." ] limited by an amendment of the claims or revoked, respectively. [ Article 105a-c EPC 2000 ] 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. [ OJ 2007, Special edition 4/2007, page 118, item 14. ]

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 1/84), 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. CA/PL 29/99, item I.1. ] This means that, after G 9/93, the only possibility for the proprietor of a European patent to volontarily 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. [ CA/PL 29/99, item II.7: "Failing opposition proceedings before the EPO ..., patent proprietors have to rely on national limitation procedures or, where these do not exist, on partial surrender or non-enforcing agreements. Often the only remaining option is "self-limitation" in national revocation proceedings. This is not only administratively time-consuming and expensive, but also means that European patents granted in accordance with a unitary procedure can be valid in different versions in different contracting states, which makes their legal enforcement on the one hand and the monitoring of protective rights on the other considerably more difficult." ] 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: :"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 proceedings 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 certainty and facilitates access by competitors to the freely available prior art." [ CA/PL 29/99, item II.5. ]

Request

A request for limitation or revocation can only be filed by the proprietor(s) of the patent. EPC Article|105a|1 ] The request may be filed at any time throughout the entire term of the European patent. [ EPO web site, [http://documents.epo.org/projects/babylon/eponet.nsf/0/9A7AF6226DB5E572C1257280004937AB/$File/capl_pv014_en.pdf "CA/PL PV 14, Minutes of the 14th meeting of the Committee on Patent Law"] (Munich, 3 to 6 July 2000), item 167: "There [is] deliberately no time limit on the limitation procedure. It should be applicable at any time during the entire term of the patent to ensure that all parties concerned were on a level playing field." ] [ EPO web site, [http://www.epo.org/patents/law/legislative-initiatives/epc2000/faq.html#answer10 "Frequently asked questions about the revised European Patent Convention (EPC 2000)"] , item 10. Consulted on October 31, 2007. ] According to the Guidelines, the request can even be filed after expiry of the patent. [ EPC 2000 Guidelines (December 2007), D.X.1. ]

However, the request may not be filed while opposition proceedings are pending. [ EPC Article|105a|2 ] Precedence, i.e. priority, is always given to opposition proceedings. This prevents limitation from occurring where an opposition has already been lodged. OJ 2007, Special edition 4/2007, page 116, item 3. ] 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 [ EPC Rule|93|1 ] (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 euros for a request for limitation and 450 Euros for a request for revocation. [ EPO, [http://www.european-patent-office.org/epo/pubs/oj007/11_07/supplement_schedule_of_fees.pdf "Supplement to OJ 11/2007, Schedule of fees and expenses applicable as from 13 December 2007"] , (PDF, 391 KB) ] The fee is due on the date that the request is filed. [ EPC 2000 Guidelines for Examination (status December 2007), [http://documents.epo.org/projects/babylon/eponet.nsf/0/4C0AAA2182E5D2F2C125736700567D71/$File/guidelines_2007_part_A_en.pdf Part A] , XI. 5.2.6. ] 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. [ EPC 2000 Guidelines (December 2007), A XI. 9.2.6., D X. 2.1(iii).]

Admissibility

In addition, the request should be filed in writing [ EPC Rule|92|1 ] and should contain: EPC Rule|92|2 ] OJ 2007, Special edition 4/2007, page 116, item 2. ]
* "particulars of the proprietor of the European patent making the request (the requester)"; EPC Rule|92|2|a ]
* "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"; EPC Rule|92|2|b ]
* "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"; [ EPC Rule|92|2|c ]
* "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;" [ EPC Rule|92|2|d ] and
* where the requester has appointed a representative, his name and the address of his place of business. [ EPC Rule|92|2|d and EPC Rule|41|2|d ] 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". [ EPC Article|105b and EPC Rule|94. ]

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. [ EPC Rule|90; EPC 2000 Guidelines (December 2007), D X 4.2 ] Therefore, a European patent may be subject to several successive limitation proceedings. [ Since, under EPC Rule|90, the subject of limitation or revocation proceedings may be the European patent as amended in limitation proceedings. See also EPC 2000 Guidelines (December 2007), D X 4.2 and 11 (Multiple requests). ]

The responsibility for limitation or revocation proceedings, i.e. deciding on requests for limitation or revocation, is incumbent upon the Examining Division. [ EPC Rule|91 ] The process of examining an admissible request for revocation differs from the process of examining an admissible request for limitation. [ For the examination of a request for revocation, see Rule 95(1) EPC 2000, for the examination of a request for limitation, see EPC Rule|95|2), (3) and (4. ]

As soon as a request for revocation is found to be admissible, the patent is revoked by the Examining Division. [ EPC Rule|95|1 ]

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". OJ 2007, Special edition 4/2007, page 118, item 5. ] It also establishes whether the amended claims meet the requirements of EPC Article|84 (clarity, conciseness and support of the claims) and EPC Article|123|2) and (3 (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). [ EPC Rule|95|2 ] 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 art) is achieved, or
* the subject-matter of the limited patent is still patentable..." OJ 2007, Special edition 4/2007, page 118, item 6. ] (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. [ Andrea Veronese & Peter Watchorn, "Procedural law under the EPC-2000", 1st Edition August 2008, Kastner AG, [http://www.pct-compass.com/downloads/EPC/3_limitation_request.pdf Chapter XVIII.1.2.1. "Examination of substantive issues"] , page 351. ]

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. [ Rule 95(3) EPC 2000 ] 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. [ EPC Article|65|1 (see also London Agreement) and OJ 2007, Special edition 4/2007, page 118, item 12. ]

The request for limitation or revocation has effect "ab initio". [ EPC Article|68; OJ 2007, Special edition 4/2007, page 118, item 10; and EPC 2000 Guidelines (December 2007), D X. 3. ] 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. [ OJ 2007, Special edition 4/2007, page 118, item 6, as well as Articles 106(1) and 21 EPC. ]

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". EPC Rule|93|2 ] 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 - of the European patent subject to the limitation procedure but published after the filing date - or priority date - of the European patent). [ EPC 2000 Guidelines (December 2007), D X.10.1. This results from EPC Rule|138. ]

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." OJ 2007, Special edition 4/2007, page 116, item 4. ]

tatistics

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 CET) to limit European patent Cite patent|EP|1333070. [ fr icon Laurent Teyssedre, [http://europeanpatentcaselaw.blogspot.com/2008/03/premires-procdures-de-limitation.html "Premières procédures de limitation"] , Le blog du droit européen des brevets, March 7, 2008. Consulted on March 7, 2008. ] [ "epoline" public file, European patent EP1333070. ] The first B3 publication of a European patent specification after limitation proceedings was published on July 23, 2008 (as [https://publications.european-patent-office.org/PublicationServer/getpdf.jsp?cc=EP&pn=0591199&ki=B3 EP 0 591 199 B3] ). [ EPO web site, [http://www.epo.org/patents/updates/2008/20080723.html "EPC 2000 - first B3 document published"] , Updates, July 23, 2008. Consulted on July 24, 2008.]

References

* European Patent Office, [http://www.european-patent-office.org/epo/pubs/oj007/08_07/special_edition_4_epc_2000_synoptic.pdf "Official Journal (OJ) 2007, Special edition 4/2007"] - "Revision of the European Patent Convention (EPC 2000). Synoptic presentation EPC 1973/2000" – Part I: The Articles (PDF, 1.72 MB)
* European Patent Office, "EPC 2000 Guidelines for Examination (status December 2007), [http://documents.epo.org/projects/babylon/eponet.nsf/0/4C0AAA2182E5D2F2C125736700567D71/$File/guidelines_2007_part_D_en.pdf Part D] , Chapter X Limitation and revocation procedure". (PDF, 263 KB)

Notes