Limitation and revocation procedures before the European Patent Office

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In European patent law, the limitation and revocation procedures before the European Patent Office (EPO) are post-grant, ex parte , [1] administrative [2] procedures allowing any European patent to be centrally [3] limited by an amendment of the claims or revoked, respectively. [4] 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 13 December 2007.

Contents

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 13 December 2007 to all European patents, whether already granted or granted after that date. [5]

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. [6] 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. [7] The EPC of 1973 made no provision for a limitation procedure, [6] 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." [8]

Request

A request for limitation or revocation can only be filed by the proprietor(s) of the patent. [1] [9] The request may be filed at any time [1] throughout the entire term of the European patent. [10] [11] According to the Guidelines, the request can even be filed after expiry of the patent. [12]

However, the request may not be filed while opposition proceedings are pending. [13] Precedence, i.e. priority, is always given to opposition proceedings. [1] This prevents limitation from occurring where an opposition has already been lodged. [14] 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 [15] (see section "Special cases" - below - for the case, "likely to be infrequent in practice", [14] where an opposition is filed "following the valid lodging of a request for limitation or revocation" [14] ).

The request must be filed with the EPO [9] and the procedure is subject to the payment of a fee. [16] The fee is due on the date that the request is filed. [17]

Admissibility

In addition, the request should be filed in writing [18] and should contain: [16] [19]

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". [25]

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. [16] [26] Therefore, a European patent may be subject to several successive limitation proceedings. [27]

The responsibility for limitation or revocation proceedings, i.e. deciding on requests for limitation or revocation, rests with the Examining Division. [28] The process of examining an admissible request for revocation differs from the process of examining an admissible request for limitation. [29]

As soon as a request for revocation is found to be admissible, the patent is revoked by the Examining Division. [30]

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". [31] It also establishes whether the amended claims meet the requirements of Article 84 EPC (clarity, conciseness and support of the claims) and Article 123(2) and (3) EPC (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). [31] [32] 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. [34]

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. [35] 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. [36]

The request for limitation or revocation has effect ab initio . [1] [37] 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. [38]

Special cases

If opposition proceedings are initiated following the valid lodging of a request for limitation or revocation, the following applies:

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). [40]

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." [41]

Statistics

One of the first requests for limitation was filed by Hewlett Packard by fax on 13 December 2007 (at about 07:30 UTC or 8.30 am CET) to limit European patent EP 1333070  . [42] [43] The first B3 publication of a European patent specification after limitation proceedings took place on 23 July 2008 (as EP 0 591 199 B3 [ permanent dead link ]). [44] 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. [45]

According to the blog Tufty the Cat, as of 2011, "[the] average time taken between a request for limitation and the date on which the request is allowed [was] 202 days, with a standard deviation of 151 days". [46]

Related Research Articles

Unitary patent

The European patent with unitary effect, more commonly known as the unitary patent, is a new type of European patent in advanced stage of adoption which would be valid in participating member states of the European Union. Unitary effect can be registered for a European patent upon grant, replacing validation of the European patent in the individual countries concerned. The unitary effect means a single renewal fee, a single ownership, a single object of property, a single court and uniform protection—which means that revocation as well as infringement proceedings are to be decided for the unitary patent as a whole rather than for each country individually. Licensing is however to remain possible for part of the unitary territory.

European Patent Convention International patent treaty

The European Patent Convention (EPC), also known as the Convention on the Grant of European Patents of 5 October 1973, is a multilateral treaty instituting the European Patent Organisation and providing an autonomous legal system according to which European patents are granted. The term European patent is used to refer to patents granted under the European Patent Convention. However, a European patent is not a unitary right, but a group of essentially independent nationally enforceable, nationally revocable patents, subject to central revocation or narrowing as a group pursuant to two types of unified, post-grant procedures: a time-limited opposition procedure, which can be initiated by any person except the patent proprietor, and limitation and revocation procedures, which can be initiated by the patent proprietor only.

The EPC 2000 or European Patent Convention 2000 is the version of the European Patent Convention (EPC) 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 adopted the final new text of the EPC 2000. The EPC 2000 entered into force on December 13, 2007.

The European Patent Convention (EPC), the multilateral treaty instituting the legal system according to which European patents are granted, contains provisions allowing a party to appeal a decision issued by a first instance department of the European Patent Office (EPO). For instance, a decision of an Examining Division refusing to grant a European patent application may be appealed by the applicant. The appeal procedure before the European Patent Office is under the responsibility of its Boards of Appeal, which are institutionally independent within the EPO.

The opposition procedure before the European Patent Office (EPO) is a post-grant, contentious, inter partes, administrative procedure intended to allow any European patent to be centrally opposed. European patents granted by the EPO under the European Patent Convention (EPC) may be opposed by any person from the public. This happens often when some prior art was not found during the grant procedure, but was only known by third parties.

European patent law covers a 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. For some states in Eastern Europe, the Eurasian Patent Convention applies.

The European Patent Bulletin is a weekly trilingual publication of the European Patent Office (EPO), generally issued every Wednesday. It contains "entries made in the Register of European Patents, as well as other particulars, the publication of which is prescribed by [the European Patent Convention (EPC)] or its implementation".

The European Patent Convention (EPC), 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 (EPO).

This is a list of legal terms relating to patents. A patent is not a right to practice or use the invention, but a territorial right to exclude others from commercially exploiting the invention, granted to an inventor or his successor in rights in exchange to a public disclosure of the invention.

Double patenting is the granting of two patents for a single invention, to the same proprietor and in the same country or countries. According to the European Patent Office, it is an accepted principle in most patent systems that two patents cannot be granted to the same applicant for one invention. However, the threshold for double patenting varies from jurisdiction to jurisdiction.

Grant procedure before the European Patent Office

The grant procedure before the European Patent Office (EPO) 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 grant of a patent, or the refusal of the application, in accordance with the legal provisions of the European Patent Convention (EPC). The grant procedure is carried out by the EPO under the supervision of the Administrative Council of the European Patent Organisation. The patents granted in accordance with the EPC are called European patents.

Article 84 of the European Patent Convention (EPC) specifies that the "matter" for which patent protection is sought in an application - the purported invention - shall be stated ("defined") in the claims. This legal provision also requires that the claims must be clear and concise, and supported by the description. The function, form and content of the claims are defined by Article 84 supplemented by Rule 43 EPC.

Article 123 of the European Patent Convention (EPC) 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. In particular, Article 123(2) EPC prohibits adding subject-matter beyond the content of the application as filed, while Article 123(3) EPC prohibits an extension of the scope of protection by amendment after grant.

Article 83 of the European Patent Convention (EPC) relates to the disclosure of the invention under the European Patent Convention. This legal provision prescribes that a European patent application must disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art.

The Guidelines for Examination in the European Patent Office are general instructions, for the examiners working at the European Patent Office (EPO) as well as for the parties interacting with the EPO, on the practice and procedure at the EPO in the various aspects of the prosecution of European patent applications and European patents. The Guidelines have been adopted, effective as at 1 June 1978, by the President of the EPO in accordance with Article 10(2)(a) EPC.

During the grant procedure before the European Patent Office (EPO), divisional applications can be filed under Article 76 EPC out of pending earlier European patent applications. A divisional application, sometimes called European divisional application, is a new patent application which is separate and independent from the earlier application, unless specific provisions in the European Patent Convention (EPC) require something different. A divisional application, which is divided from an earlier application, cannot be broader than the earlier application, neither in terms of subject-matter nor in terms of geographical cover.

The restitutio in integrum or re-establishment of rights under the European Patent Convention (EPC) is a means of redress available to an applicant or patent proprietor who has failed to meet a time limit in spite of exercising "all due care required by the circumstances". The legal basis for this means of redress is provided in Article 122 EPC. If the request for restitutio in integrum is accepted, the applicant or patentee is re-established in its rights, as if the time limit had been duly met.

The fees due at the European Patent Office (EPO) in relation to a European patent application are laid out in the Rules relating to Fees of 20 October 1977, as adopted by decision of the Administrative Council of the European Patent Organisation of 7 December 2006 and as last amended by decision of the Administrative Council of 12 December 2018.

Under the European Patent Convention (EPC), any third party –i.e., essentially any person– may file observations on the patentability of an invention which is the subject of a European patent application or, after grant, subject of a European patent, especially to draw the attention of the European Patent Office (EPO) to some relevant prior art documents. This is a form of public participation in the examination of patent applications.

The unitary patent for Switzerland and Liechtenstein is a patent having a unitary character over the territories of Switzerland and Liechtenstein. It can either be a national patent, or a European patent granted under the European Patent Convention (EPC) and having a unitary character pursuant to Article 142(1) EPC. The unitary patent "may only be granted, transferred, annulled or lapse in respect of the whole territory of protection," i.e. for both Switzerland and Liechtenstein.

References

  1. 1 2 3 4 5 6 OJ 2007, Special edition 4/2007, page 116, item 1.
  2. ↑ EPO web site, 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.
  3. ↑ EPO web site, 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."
  4. ↑ Article 105a-c EPC 2000
  5. ↑ OJ 2007, Special edition 4/2007, page 118, item 14.
  6. 1 2 CA/PL 29/99, item I.1.
  7. ↑ 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."
  8. ↑ CA/PL 29/99, item II.5.
  9. 1 2 Article 105a(1) EPC
  10. ↑ EPO web site, 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."
  11. ↑ EPO web site, Frequently asked questions about the revised European Patent Convention (EPC 2000) Archived 17 May 2008 at the Wayback Machine , item 10. Consulted on 31 October 2007.
  12. ↑ Guidelines for Examination in the EPO , section d-x, 1 : "Introduction": "(...) the request can be filed at any time after grant, after opposition proceedings, or even after expiry of the patent."
  13. ↑ Article 105a(2) EPC
  14. 1 2 3 4 5 OJ 2007, Special edition 4/2007, page 116, item 3.
  15. ↑ Rule 93(1) EPC
  16. 1 2 3 OJ 2007, Special edition 4/2007, page 116, item 2.
  17. ↑ Guidelines for Examination in the EPO , section a-x, 5.2.6 : "Fees for limitation/revocation, opposition, appeal, petition for review".
  18. ↑ Rule 92(1) EPC
  19. ↑ Rule 92(2) EPC
  20. 1 2 Rule 92(2)(a) EPC
  21. 1 2 Rule 92(2)(b) EPC
  22. ↑ Rule 92(2)(c) EPC
  23. ↑ Rule 92(2)(d) EPC
  24. ↑ Rule 92(2)(d) EPC and Rule 41(2)(d) EPC
  25. ↑ Article 105b EPC and Rule 94 EPC.
  26. ↑ Rule 90 EPC; Guidelines for Examination in the EPO , section d-x, 4.2 : "Basis for the examination".
  27. ↑ Since, under Rule 90 EPC, the subject of limitation or revocation proceedings may be the European patent as amended in limitation proceedings. See also Guidelines for Examination in the EPO , section d-x, 4.2 : "Basis for the examination" and Guidelines for Examination in the EPO , section d-x, 11 : "Multiple requests".
  28. ↑ Rule 91 EPC
  29. ↑ For the examination of a request for revocation, see Rule 95(1) EPC 2000, for the examination of a request for limitation, see Rule 95(2), (3) and (4) EPC.
  30. ↑ Rule 95(1) EPC
  31. 1 2 OJ 2007, Special edition 4/2007, page 118, item 5.
  32. ↑ Rule 95(2) EPC
  33. ↑ OJ 2007, Special edition 4/2007, page 118, item 6.
  34. ↑ Andrea Veronese & Peter Watchorn, Procedural law under the EPC-2000, 3rd Edition May 2013, Kastner AG, Chapter XVIII.1.2.1. "Examination of substantive issues" Archived 15 July 2011 at the Wayback Machine , page 411.
  35. ↑ Rule 95(3) EPC 2000
  36. ↑ Article 65(1) EPC (see also London Agreement) and OJ 2007, Special edition 4/2007, page 118, item 12.
  37. ↑ Article 68 EPC; OJ 2007, Special edition 4/2007, page 118, item 10; and Guidelines for Examination in the EPO , section d-x, 3 : "Decision on request for revocation".
  38. ↑ OJ 2007, Special edition 4/2007, page 118, item 6, as well as Articles 106(1) and 21 EPC.
  39. 1 2 Rule 93(2) EPC
  40. ↑ Guidelines for Examination in the EPO , section d-x, 10.1 : "Limitation results in the claims becoming different in different Contracting States". This results from Rule 138 EPC.
  41. ↑ OJ 2007, Special edition 4/2007, page 116, item 4.
  42. ↑ (in French) Laurent Teyssedre, Premières procédures de limitation, Le blog du droit européen des brevets, 7 March 2008. Consulted on 7 March 2008.
  43. ↑ epoline public file, European patent EP1333070.
  44. ↑ EPO web site, EPC 2000 - first B3 document published Archived 30 August 2008 at the Wayback Machine , Updates, 23 July 2008. Consulted on 24 July 2008.
  45. ↑ EPO web site, One year on: how applicants have reacted to the revised EPC Archived 9 February 2009 at the Wayback Machine , News, 6 February 2009. Consulted on 8 February 2009.
  46. ↑ Thoughts On The EP Limitation Procedure, Tufty the Cat, 2 April 2011. Consulted on 13 May 2011.

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