Limitation and revocation

Chapter 1. Purpose of these procedures

These procedures are new to the EPC 2000:

  • revocation is a procedure forcancel his own patent (as issued, modified as a result of opposition or already limited, R90 EPC):
    • retroactively (A68 CBE) and
    • so centralized ;
    • this may be useful, for example, in order to avoid a long and costly invalidity procedure;
  • limitation is a procedure for limit the scope of its own patent (as granted, modified by opposition or already limited, R90 EPC):
    • retroactively (A68 CBE) and
    • so centralized ;
    • several successive limitations are possible (DX 11 Guidelines);
    • this may be useful, for example, in the discovery of prior art after delivery.

This makes it possible, in particular, to overcome the prohibition on filing an opposition against its own patent (G9 / 93).

Chapter 2. Query

Section 2.1. Form

2.1.1. Principle

In order to request a revocation or limitation, the holder (A105bis (1) EPC) submit 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 (although a signed confirmation may be requested, " Decision of the President of the European Patent Office dated 12 July 2007 concerning the filing of patent applications and other documents by telefax », OG 2007, Special Edition No. 3, A.3, A7 (2))
    • if the confirmation is not received within a specified time, the request is deemed not presented;
    • theA122 EPC is applicable to the time limit, but it is better to simply file a new request.

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

  • the presence of the signature (R50 (3) EPC),
  • the fact that the documents are typewritten or printed (R50 (2) EPC),
  • a margin of approximately 2.5 cm is left to the left of the pieces (R50 (2) EPC and also R49 (3) EPC other margin conditions, etc.).

2.1.2. Irregularity related to the signature

In the absence of signature, the EPO will invite the holder to correct this irregularity in a deadline (R50 (3) EPC).

If this irregularity is not corrected, the request will be deemed not presented (R50 (3) EPC).

TheA122 EPC is applicable to the time limit, but it is better to simply file a new request.

2.1.3. Other irregularities

If the request does not comply with the other conditions (ie any irregularity outside the default of signature), the request is rejected inadmissible after an invitation to correct it within a specified period (DX 2.2 Guidelines i and R94 EPC).

Section 2.2. Place

This request must be submitted to the EPO (Berlin, Munich or LaHaye, " Decision of the President of the European Patent Office dated 3 January 2017 concerning the designation of EPO receiving offices », OY 2017, A11).

Nevertheless, if the request is submitted to the Vienna office, he will forward it (this will just delay the procedure) (" Decision of the President of the European Patent Office dated 3 January 2017 concerning the designation of EPO receiving offices », OY 2017, A11).

Section 2.3. Time limit

This request may be made at any time, even if the patent has expired (DX Guidelines 1).

Section 2.4. Language

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

An official language of one of the Contracting States (a priori, without residence condition of the holder or his nationality ...) is possible if a translation is provided within a 1 month (R92 (1) EPC together R6 (2) EPC) (DX 2.1 Guidelines iv).

Nevertheless, to benefit from the reduction of the limitation or revocation fee (R92 (1) EPC together R6 (3) EPC together A14 (4) EPC), cumulatively:

  • the person making the request in a unofficial language a natural or legal person:
    • domiciled or domiciled in a Contracting State having a language other than German, English or French as the official language
    • or a national of that State having his domicile abroad.
  • the application was filed or entered into phase before April 1, 2014 (" Decision of the Administrative Council of 13 December 2013 amending Rule 6 of the Implementing Regulation to the European Patent Convention and Article 14 (1) of the Rules relating to Fees », OY 2014, A4).

Section 2.5. Representation

A priori, if the holder is to be represented (ie persons who have neither their domicile nor their seat in a Contracting State, A133 (2) EPC), the EPO invites the holder to choose a professional representative or a lawyer within a specified period.

TheA122 EPC is applicable to the time limit, but it is better to simply file a new request.

Otherwise, the request will be considered as not presented (DX 2.1 Guidelines v).

Section 2.6. contents

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

  • identification of the holder as provided for in R41 (2) (c) EPC (R92 (2) (a) EPC);
  • the patent number (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 it isR92 (2) (a) EPC);
  • the name and address of the other holders (non-applicants, if any) and (R92 (2) (c) EPC):
    • the list of States for which they are holders;
    • proof that they authorize the applicant to act on their behalf (as the limitation will have effect for all Contracting States, A105ter (3) EPC and DX Guidelines 3except in the case of prior national rights R138 EPC, DX 10 Guidelines);
    • this condition is valid even for States where the patent is extinguished;
    • a priorithis condition is also valid for former holders (ie for States for which the patent has ceased to have effect);
  • indications concerning the representative (if necessary, R41 (2) (d) EPC) (R92 (2) (e) EPC);
  • in the case of limitation, the complete set (s) of the amended claims (R92 (2) (d) EPC).

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

Failing correction, the request will be rejected for inadmissibility (R94 EPC and DX 2.2 Guidelines).

TheA122 EPC is applicable to the time limit.

Section 2.7. Claims and other modifications

2.7.1. Principle

Normally, it is not possible to present several different sets of claims for different states (A105ter (3) EPC).

The modifications must respect the requirements of the forms of the parts of the application (R92 (1) EPC, ex. margin, etc.).

2.7.2. Several sets of claims

Nevertheless, this may be allowed in some cases (DX 10 Guidelines):

  • if there is only one set of claims initially, then it will be necessary to indicate to the EPO the existence of prior national rights (R138 EPC and DX 10.1 Guidelines).
  • if there were several sets of claims (DX 10.2 Guidelines):
    • and if the limitations make the games converge to a single game, this should not be a problem;
    • otherwise it will be necessary to indicate to the EPO the existence of prior national rights (R138 EPC).

The modifications must respect the requirements of the forms of the parts of the application (R92 (1) EPC, ex. margin, etc.).

2.7.3. Description and drawings

It is also possible to produce a description and a modified description (R92 (2) (d) EPC).

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

A priori, it does not seem possible to produce several games different descriptions and drawings in case of plurality of holders in different countries. It should therefore go through a national limitation if it is available.

The modifications must respect the requirements of the forms of the parts of the application (R92 (1) EPC, ex. margin, etc.).

2.7.4. Language

The modifications must be written in the language of the procedure (R3 (2) EPC).

Section 2.8. Motivation of the request

Normally, there is no need to justify your request.

Nevertheless, this may be useful if (DX 4.2 Guidelines):

  • it can be complex to see that the modifications are a limitation;
  • if there is a prior national law.

Section 2.9. Tax

2.9.1. Principle

The limitation fee (A105bis (1) EPC) is of 1165 € (A2 (1) .10bis RRT).

The revocation fee (A105bis (1) EPC) is of 525 € (A2 (1) .10bis RRT).

2.9.2. Reduction

1) Discount before April 1, 2014

If the petitioner submitting an application is a natural or legal person domiciled or domiciled in a Contracting State having a language other than German, English or French as an official language (a national of that State having his domicile at foreigner) and to file the application in that language (R6 (3) EPC), he will benefit from a tax reduction of 20% (A14 (1) RRT).

2) Reduction as of April 1, 2014

For applications filed (incoming in phase) as of April 1, 2014, no reduction is possible (" Decision of the Administrative Council of 13 December 2013 amending Rule 6 of the Implementing Regulation to the European Patent Convention and Article 14 (1) of the Rules relating to Fees », OY 2014, A4).

2.9.3. Refund

If the request is deemed not presented (eg default of signature) the tax is refunded (DX 2.1 Guidelines).

Likewise, if an opposition is filed during the limitation procedure (but no revocation), the tax paid is refunded (R93 (2) EPC).

Chapter 3. Examination of the petition

Section 3.1. Skill

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

Section 3.2. Formal examination

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

If the request has any irregularity (R92 EPC), the EPO (in practice the formalities officer, DX 2.1 Guidelines) notify the applicant and give him a deadline to correct (R94 EPC).

TheA122 EPC is applicable to this time limit.

If no correction is made or if the correction is not sufficient, the request is rejected (R94 EPC).

The decision to rejection is subject to appeal (A106 (1) EPC), but it may be more economically interesting to file a new application.

Section 3.3. Substantive examination for revocation

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

Section 3.4. Substantive examination for the limitation

3.4.1. Principle

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

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

  • that the modifications made to the claims are indeed limitations;
    • in particular, if the object remains the same (excluding clarifications), the limitation must be refused (DX 4.3 Guidelines).
  • amendments do not extend the scope of the patent (A123 (3) EPC);
  • that the claims do not extend beyond the description as filed (A123 (2) EPC);
  • that the changes are clear (A84 CBE).

Changes to the application or drawings must also meet these requirements (DX 4.3 Guidelines).

Normally, other patentability requirements are not examined. Nevertheless, if, obviously, the claims are not patentable within the meaning of the other patentability criteria (eg an explosive product is limited in the form of an antipersonnel mine proscribed by theA53 (a) EPC) then the EPO informs the applicant (H-IV Guidelines 4.4.3).

3.4.2. In case of inadmissible changes

If one of the above conditions is not fulfilled, the EPO gives the applicant a single chance to correct its claims to bring them into compliance with these rules in a deadline.

This delay is often 2 months (DX 4.4 Guidelines).

Normally, the applicant has only one chance, but if he requires oral proceedings, this request must be accepted (A116 CBE and DX 4.4 Guidelines).

Only theA122 EPC is applicable to this time limit.

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

3.4.3. Third party observations

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

Observations concerning all point of patentability can be raised (DX 4.5 Guidelines) even if it concerns points which are not normally analyzed during the limitation procedure as novelty.

This does not mean that the examining division will take it into account (see above on the elements taken into account).

Section 3.5. Withdrawing the request

It is possible to withdraw any request as long as the proceedings are still pending and the decision has not yet been taken (DX 9 Guidelines).

No tax will be refunded in this case.

Chapter 4. Decision

Section 4.1. Decision for revocation

With regard to revocation, the EPO simply notifies the applicant of the effective revocation of his patent (R95 (1) EPC).

The applicant is informed of the date of publication of the decision at the BEB because it is from this date that the revocation takes effect (A105ter (3) EPC).

Section 4.2. Decision for the limitation

As regards the limitation, the EPO notifies the applicant of the imminent limitation (A105ter (2) EPC together R95 (3) EPC).

The applicant must, in addition, perform the following actions under 3 months (R95 (3) EPC):

  • pay a prescribed fee for the publication of a new fascicle (75 €, A2 (1) .8 RRT);
  • provide a translation of the limited claims into the other official languages of the EPO.

Only theA122 EPC is applicable to this period of 3 months (but it is better to pay the surcharge mentioned below).

In this case, the patent is then limited (R95 (3) EPC).

If the deadline is missed, a notification is sent and runs a new deadline of 2 months to perform these actions (upon payment of a late fee, R95 (3) EPC together R82 (3) EPCfirst sentence 120 €, A2 (1) .9 RRT).

Only theA122 EPC is applicable to this period of 2 months.

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

Section 4.3. REB Registration

When submitting an application, the date, the name of the applicant, his address and the state of his domicile are entered in the REB (A127 EPC).

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

Section 4.4. Effect of the decision

4.4.1. Principle

The limitation or revocation of the patent has an effect retroactive (A68 CBE) in all states (A105ter (3) EPC), from the mention of the decision (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 (DX 10 Guidelines).

4.4.2. Case of national proceedings

The European procedure does not have priority over a current instance at national level (this depends on national law).

Section 4.5. Publication of the amended fascicle

The reference to BEB limitation and the modified specification are published at the same time if technically possible. Otherwise, the booklet is published as soon as possible after the mention of the BEB limitation (A105quater EPC).

The specification includes the description, the claims and the drawings as modified (R96 EPC). A new certificate is given to the holder (R96 EPC together R74 EPC).

Section 4.6. Translation for Contracting States

It is possible (A65 EPC) that some States prescribe 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 (eg Belgium does not request translations whereas it requests a full translation in case of validation).

The translation must be produced within a minimum period of 3 months from the publication of the reference to the BEB limitation (A65 (1) EPC).

Chapter 5. Primacy of the opposition proceedings

Section 5.1. Opposition already in progress

If on the date of submission of the request for limitation / revocation an opposition was already in progress, these requests are deemed not presented (R93 (1) EPC).

Indeed, it is still possible for the proprietor to ask the Opposition Division for the revocation or limitation of his patent (D-VI Guidelines 2.2).

Section 5.2. Opposition formed after

If an opposition is formed while a limitation procedure is in progress, the latter will be closed and the taxes paid will be refunded (R93 (2) EPC).

In this case, a decision of rejection the request for limitation will probably be pronounced (A105ter (2) EPC together R95 (4) EPC).

On the other hand, nothing is said to the R93 (2) EPC as to the revocation procedure: thus, it will go to completion and opponents will be notified that the patent has been revoked (DX 7.1 Guidelines).

In the latter case, a decision to revoke will be pronounced (A105ter (2) EPC together R95 (1) EPC).

Chapter 6. Claim Action

As stated in the article on "stolen" inventions, it is possible to make an action in claim in order to be reassigned the right to the patent (A61 (1) EPC).

In order to protect the person conducting the action in claim, the procedure for deliverance is suspended the time of the action (well within certain limits R14 (1) EPC, R14 (3) EPC and R14 (4) EPC).

But what about the procedures out of issue (like limitation and revocation)? Are they suspended?

A priori nothing is indicated in the EPC and the logic would be that revocation and / or limitation are possible even if an action in claim is introduced. Nevertheless, it costs nothing to warn the EPO in the hope that it will act adequately ...

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