Limitation and Revocation Procedures Before The European Patent Office - Particulars of The Proceedings and Effects

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 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). 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..." (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. 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.