Limitation and Revocation

Purpose of these procedures

These procedures are a novelty of the EPC 2000:

• revocation is a procedure allowing the cancellation of one’s own patent (as granted, amended following an opposition, or already limited, R90 EPC):
  • retroactively (A68 EPC) and
  • in a centralized manner;
  • this may be useful, for example, to avoid a lengthy and costly nullity proceeding;
• limitation is a procedure allowing the limitation of the scope of one’s own patent (as granted, amended following an opposition, or already limited, R90 EPC):
  • retroactively (A68 EPC) and
  • in a centralized manner;
  • several successive limitations are possible (Guidelines D-X 11);
  • this may be useful, for example, upon discovery of prior art after grant.

This notably allows addressing the prohibition on filing an opposition against one’s own patent (G9/93).

Request

Form

Principle

To request revocation or limitation, the proprietor (A105bis(1) EPC) must file a written request (R92(1) EPC):

• in paper format;
• electronically (« Decision of the President of the European Patent Office dated 9 May 2018 concerning the electronic filing of documents« , OJ 2018, A45);
• by fax (even though a signed confirmation may be requested, « Decision of the President of the European Patent Office dated 20 February 2019 concerning the filing of patent applications and other documents by telefax« , OJ 2019, A18)
  • if the confirmation is not received within the set time limit, the request shall be deemed not to have been filed;
  • A122 EPC applies to the set time limit, but it is preferable to simply file a new request.

It must comply with the formal requirements prescribed by R50 EPC (R92(1) EPC, last sentence), such as:

• the presence of a signature (R50(3) EPC),
• the fact that the documents are typewritten or printed (R50(2) EPC),
• that a margin of approximately 2.5 cm be left on the left side of the documents (R50(2) EPC and also R49(3) EPC on other margin requirements, etc.).

Irregularity related to the signature

In the absence of a signature, the EPO will invite the proprietor to correct this irregularity within a set time limit (R50(3) EPC).

If this irregularity is not corrected, the request shall be deemed not to have been filed (R50(3) EPC).

A122 EPC applies to the set time limit, but it is preferable to simply file a new request.

Other irregularities

If the request does not comply with other requirements (i.e., any irregularity other than the lack of a signature), the request shall be rejected as inadmissible after an invitation to correct it within a set time limit (Guidelines D-X 2.2 i and R94 EPC).

Place

This request must be filed with the EPO (Berlin, Munich or The Hague, « Decision of the President of the European Patent Office, dated 3 January 2017, concerning the designation of EPO filing offices« , OJ 2017, A11).

However, if the request is filed with the Vienna office, it will forward it (this will only delay the procedure) (« Decision of the President of the European Patent Office, dated 3 January 2017, concerning the designation of EPO filing offices« , OJ 2017, A11).

Time limit

This request may be filed at any time, even if the patent has expired (Guidelines D-X 1).

Language

This request must be filed in an official language of the Office (R92(1) EPC).

An official language of one of the contracting states (a priori, without any requirement as to the domicile of the proprietor or their nationality…) is acceptable if a translation is provided within a period of 1 month (R92(1) EPC together with R6(2) EPC) (Guidelines D-X 2.1 iv).

However, to benefit from the reduction of the official fee for limitation or revocation (R92(1) EPC together with R6(3) EPC together with A14(4) EPC), the following must be cumulatively met:

• The person filing the request in a non-official language must be a natural or legal person:
  • having their domicile or registered office in a contracting state with an official language other than English, French or German; or
  • a national of such a state having their domicile abroad.
• The application must have been filed or entered the national phase before 1 April 2014 (« Decision of the Administrative Council of 13 December 2013 amending Rule 6 of the Implementing Regulations to the European Patent Convention and Article 14(1) of the Rules relating to Fees« , OJ 2014, A4).

Representation

In principle, if the proprietor must be represented (i.e., persons who have neither their domicile nor their registered office in a contracting state, A133(2) EPC), the EPO will invite the proprietor to appoint a professional representative or an attorney within a specified period.

A122 EPC applies to the specified period, but it is preferable to simply file a new request.

Otherwise, the request will be deemed not to have been filed (Guidelines D-X 2.1 v).

Content

This request must contain (R92(2) EPC):

• an identification of the proprietor as provided in R41(2) c) EPC (R92(2) a) EPC);
  • if there are multiple proprietors filing a joint request, a common representative must be appointed in accordance with R151(1) EPC (Guidelines D-X 2.2.vi);
• the number of the patent (R92(2) b) EPC);
• the list of states for which the patent has taken effect (R92(2) b) EPC);
• the list of states for which the proprietor holds rights (R92(2) a) EPC);
• the name and address of the other proprietors (non-applicants, where applicable) as well as (R92(2) c) EPC):
  • the list of states for which they hold rights;
  • proof that they authorize the applicant to act on their behalf (since the limitation will have effect for all contracting states, A105ter(3) EPC and Guidelines D-X 3, except in the case of national prior rights R138 EPC, Guidelines D-X 10);
  • this condition applies even for states where the patent has lapsed;
  • a priori, this condition also applies to former proprietors (i.e., for states where the patent has ceased to have effect);
• details concerning the representative (if required, R41(2) d) EPC) (R92(2) e) EPC);
• in the case of limitation, the complete set(s) of amended claims (R92(2) d) EPC).

If any of the above information is missing, the division will invite the applicant to correct it within a specified period (R94 EPC).

If the correction is not made, the request will be rejected as inadmissible (R94 EPC and Guidelines D-X 2.2).

A122 EPC applies to the specified period.

Claims and other amendments

Principle

As a rule, it is not possible to submit multiple sets of claims for different states (A105ter(3) EPC).

The amendments must comply with the formal requirements for application documents (R92(1) EPC, e.g., margins, etc.).

Multiple sets of claims

However, this may be permitted in certain cases (Guidelines D-X 10):

• if there was initially only one set of claims, it will then be necessary to inform the EPO of the existence of national prior rights (R138 EPC and Guidelines D-X 10.1).
• if there were multiple sets of claims (Guidelines D-X 10.2):
  • and if the limitations converge the sets into a single set, this should not pose any issues;
  • otherwise, it will be necessary to inform the EPO of the existence of national prior rights (R138 EPC).

The amendments must comply with the formal requirements for application documents (R92(1) EPC, e.g., margins, etc.).

Description and drawings

It is also possible to file a description and an amended description (R92(2)(d) EPC).

These amendments must be related to the amendments to the claims (Guidelines H-IV 4.4.2).

At first glance, it does not appear possible to file several different sets of descriptions and drawings in the case of multiple proprietors in different countries. It would thus be necessary to proceed with a national limitation if available.

The amendments must comply with the formal requirements for application documents (R92(1) EPC, e.g., margin, etc.).

Language

The amendments must be drafted in the language of the proceedings (R3(2) EPC).

Grounds for the request

Normally, it is not necessary to provide grounds for the request.

However, this may prove useful if (Guidelines D-X 4.2):

• it may be complex to see that the amendments are indeed a limitation;
• in the case of a prior national right.

Official fee

Principle

The limitation official fee (A105bis(1) EPC) is [montant_epo default= »1105 € » name= »A2(1).10bis RRT – limitation »] (A2(1).10bis RFees).

The revocation official fee (A105bis(1) EPC) is [montant_epo default= »500 € » name= »A2(1).10bis RRT – revocation »] (A2(1).10bis RFees).

Reduction

Reduction before 1 April 2014

If the applicant filing a request is a natural or legal person having their residence or principal place of business in a contracting state having a language other than English, French, or German as an official language (a national of that state having their residence abroad) and files the request in that language (R6(3) EPC), they will benefit from a 20% official fee reduction (A14(1) RFees).

Reduction as of 1 April 2014

For applications filed (entering the phase) as of 1 April 2014, no reduction is possible (« Decision of the Administrative Council of 13 December 2013 amending Rule 6 of the Implementing Regulations to the European Patent Convention and Article 14(1) of the Rules relating to Fees« , OJ 2014, A4).

Refund

If the request is deemed not to have been filed (e.g., lack of signature), the official fee is refunded (Guidelines D-X 2.1).

Similarly, if an opposition is filed during the limitation proceedings (but not revocation), the paid official fee is refunded (R93(2) EPC).

Examination of the request

Competence

The Examining Division (R91 EPC) is competent for limitation or revocation requests.

Formal examination

In order for the request to be examined, it is necessary to pay the corresponding official fee (A105bis(1) EPC) mentioned above.

If the request contains any irregularity (R92 EPC), the EPO (in practice, the formalities officer, Guidelines D-X 2.1) notifies the applicant and sets a time limit for correction (R94 EPC).

The A122 EPC applies to this time limit.

If no correction is made or if the correction made is insufficient, the request is refused (R94 EPC).

The decision to refuse is subject to appeal (A106(1) EPC), but it may be more economically advantageous to file a new request.

Substantive examination for revocation

For revocation, and understandably so, no substantive examination is carried out (R95(1) EPC).

Substantive examination for limitation

Principle

For limitation, the EPO does not conduct a full examination of the patentability of the claims.

The EPO only verifies (R95(2) EPC):

• that the amendments made to the claims are indeed limitations;
  • in particular, if the subject-matter remains the same (apart from amendments related to clarifications), the limitation must be refused (Guidelines D-X 4.3).
• that the amendments made do not extend the scope of the patent (A123(3) EPC);
  • in particular, claiming a different subject-matter is not possible (Guidelines D-X 4.3).
• that the claims do not extend beyond the content of the description as filed (A123(2) EPC);
• that the amendments are clear (A84 EPC).

Amendments to the application or drawings must also satisfy these requirements (Guidelines D-X 4.3).

Normally, the other patentability requirements are not examined. However, if it is clearly evident that the claims are not patentable under the other patentability criteria (e.g., an explosive product is limited in the form of an antipersonnel mine prohibited by A53(a) EPC), the EPO informs the applicant (Guidelines H-IV 4.4.3).

In case of inadmissible amendments

If one of the above conditions is not met, the EPO gives the applicant a single opportunity to correct the claims to comply with these rules within a set time limit.

This time limit is often 2 months (Guidelines D-X 4.4).

Normally, the applicant has only one opportunity, but if an oral proceedings request is filed, this request must be granted (A116 EPC and Guidelines D-X 4.4).

Only A122 EPC applies to this time limit.

Otherwise, the limitation is refused (R95(4) EPC).

Third-party observations

Third-party observations (A115 EPC) may be filed during the limitation procedure.

Observations concerning any aspect of patentability may be raised (Guidelines D-X 4.5), even if they relate to aspects not normally examined during the limitation procedure, such as novelty.

This does not mean that the examining division will take them into account (see above regarding the elements considered).

Withdrawal of the request

It is possible to withdraw any request as long as the procedure is still pending and the decision has not yet been taken (Guidelines D-X 9).

No official fee will be refunded in this case.

Decision

Decision for revocation

Regarding revocation, the EPO simply notifies the requester of the effective revocation of their patent (R95(1) EPC).

The requester is informed of the date of publication of the decision in the EPO Bulletin, as this is the date from which the revocation takes effect (A105ter(3) EPC).

Decision for limitation

Regarding limitation, the EPO notifies the requester of the impending limitation (A105ter(2) EPC together with R95(3) EPC).

The requester must, in addition, take the following actions within 3 months (R95(3) EPC):

• pay a prescribed official fee for the publication of a new specification ([montant_epo default= »70 € » name= »A2(1).8 RFees »], A2(1).8 RFees);
• provide a translation of the limited claims in the other official languages of the EPO.

Only A122 EPC applies to this 3-month period (though it is preferable to pay the additional official fee mentioned below).

The patent is then limited (R95(3) EPC).

If the deadline is missed, a notification is then sent, triggering a new 2-month period to take these actions (subject to payment of a late official fee, R95(3) EPC together with R82(3) EPC, first sentence, [montant_epo default= »115 € » name= »A2(1).9 RFees »], A2(1).9 RFees).

Only A122 EPC applies to this 2-month period.

Otherwise, the limitation is rejected (A105ter(2) EPC together with R95(4) EPC).

Entry in the European Patent Register

When filing a request, the date, the name of the requester, their address, and the state of their domicile are entered in the European Patent Register (A127 EPC).

Similarly, the decision in the procedure is also recorded (R143(1) x) EPC).

Effect of the decision

Principle

The limitation or revocation of the patent has a retroactive effect (A68 EPC) in all States (A105ter(3) EPC), as of the date of the decision’s publication (A105ter(3) EPC).

In the case of prior national rights (R138 EPC), it is nevertheless possible to have different sets of claims for certain States (Guidelines D-X 10).

National proceedings cases

The European procedure does not take precedence over ongoing national proceedings (this depends on national law).

Publication of the amended specification

The mention of the limitation in the EPO Bulletin and the amended specification are published simultaneously if technically possible. Otherwise, the specification is published as soon as possible after the mention of the limitation in the EPO Bulletin (A105quater EPC).

The specification includes the description, claims, and drawings as amended (R96 EPC). A new certificate is issued to the proprietor (R96 EPC together with R74 EPC).

Translation for the contracting States

It is possible (A65 EPC) that certain States require translations of the amendments.

These requirements are mentioned in the article on national validations. However, some States may be more flexible for limitations than for national validations (e.g., Belgium does not require translations, whereas it requires a full translation in the case of validation).

The translation must be submitted within a minimum period of 3 months from the publication of the mention of the limitation in the EPO Bulletin (A65(1) EPC).

Precedence of the opposition procedure

Opposition already pending

If, on the date of the filing of the request for limitation/revocation, an opposition was already pending, such requests shall be deemed not to have been filed (R93(1) EPC).

Indeed, the proprietor may always request the opposition division to revoke or limit their patent (Guidelines D-VI 2.2).

Opposition filed subsequently

If an opposition is filed while a limitation procedure is pending, the latter will be closed, and the official fees paid will be refunded (R93(2) EPC).

In this case, a decision of rejection of the limitation request will likely be issued (A105ter(2) EPC together with R95(4) EPC).

However, nothing is stated in R93(2) EPC regarding the revocation procedure: thus, it will proceed to its conclusion, and the opponents will be notified that the patent has been revoked (Guidelines D-X 7.1).

In the latter case, a revocation decision will be issued (A105ter(2) EPC together with R95(1) EPC).

Entitlement action

As mentioned in the article on « stolen » inventions, it is possible to file an entitlement action in order to be reassigned the right to the patent (A61(1) EPC).

To protect the person filing the entitlement action, the grant procedure is suspended for the duration of the action (within certain limits R14(1) EPC, R14(3) EPC and R14(4) EPC).

But what about non-grant procedures (such as limitation and revocation)? Are they suspended?

At first glance, nothing is specified in the EPC, and logic would suggest that revocation and/or limitation should be possible even if an entitlement action has been filed. Nevertheless, it does not hurt to notify the EPO in the hope that it will act appropriately…