Limitation and waiver

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Chapter 1. Purpose of these procedures

Article L613-24 CPI has:

The owner of the patent may at any time either waive the entire patent or one or more claims, or limit the scope of the patent by modifying one or more claims.

These two procedures are actually very close:

  • the waiver is a procedure to cancel one's own patent (as issued, modified following an opposition in Europe or already limited):
    • retroactively (L613-24 CPIfourth paragraph) and
    • this may be useful, for example, in order to avoid a lengthy and costly invalidity procedure or by application of an amicable agreement between two parties;
  • the limitation is a procedure to limit the scope of its own patent (as granted, modified following an opposition in Europe or already limited):
    • retroactively (L613-24 CPIfourth paragraph) and
    • this may be useful, for example, in the discovery of prior art after delivery.

Chapter 2. Query

Section 2.1. Form

The request must be made in writing (R613-45 CPI).

Section 2.2. contents

The query contains (R613-45 CPI):

  • The designation of the patent in question (there can only be one)
  • Amended claims (if limited);
  • Description and modified drawings (if applicable);
  • The quality of the applicant;
  • A signed special authority authorizing the waiver or limitation (if the applicant is neither the registered holder nor an IPA or a lawyer);
    • if there is more than one owner, the request or the power must be signed by all registered
  • Proof of a waiver or limitation fee
  • An agreement of all persons having a real right to the patent (eg simple license, exclusive license, pledge, etc.) insofar as this right has been registered in the GNI.

Section 2.3. Representation

If the request is not made by the owner (s), it seems entirely possible for anyone to submit the application (R613-45 CPI):

  • no power will be sought for ICC or lawyers
  • a special power is necessary in the opposite case.

Section 2.4. Motivation

No justification for the reason for the limitation or waiver is prescribed by the Code.

Section 2.5. Patent subject to the request

2.5.1. French patent

Of course, it is possible to limit a French patent (L613-24 CPI).

2.5.2. French part of a European patent

1) The position of French case law

According to case law, it also seems possible to limit the French part of a European patent (Paris Court of Appeal, Pôle 5, 2e ch., June 26, 2015, RG n ° 2014/23888).

According to the court, even though the article L614-12 CPI provides for the possibility of filing an application for invalidity with the EPO, no text limits the scope of the article L613-24 CPI.

2) Analysis of the EPC: limitation outside court proceedings

Even if he'A2 EPC provides that the French part of a European patent is subject to the same regime as a French patent, this identity of a regime is subject to the condition that the EPC provides otherwise.

In fact, some consider that theA105bis EPC gives exclusive jurisdiction to the EPO (excluding judicial proceedings):

The request must be submitted to the European Patent Office in accordance with the Regulations.

It should be qualified because I find that there is a real ambiguity in this article, which may call into question this "exclusive competence":

  • must the application be filed with the EPO in accordance with the Regulations? or
  • must the request be made in accordance with the Regulations when submitted to the EPO?

It changes everything!

You have two hours ...

3) Analysis of the EPC: limitation in the context of judicial proceedings

In the context of legal proceedings, it is necessary to look at the third paragraph of theA138 EPC.

In proceedings before the court or the competent authority concerning the validity of the European patent, the patent proprietor is entitled to limit the patent by amending the claims. The patent thus limited serves as a basis for the procedure.

No further indication is given, leaving the national law free to determine the modalities.

So, some still claim that the article L614-12 CPI (third paragraph) gives this limitation jurisdiction to the EPO in the context of an action for annulment, unless this limitation is the consequence of a court decision partially annulling the French part of the European patent (L614-12 CPIsecond paragraph).

In the context of an action for annulment of the European patent, its holder is empowered to limit the patent by amending the claims in accordance with Article 105a of the Munich Convention ; the patent thus limited constitutes the subject of the action for annulment brought.

But again, there is an ambiguity:

  • does that mean that one "can"Limit during such an action in nullity, but that in case of limitation, it is"necessary"To do it via the procedure of theA105bis EPC ?
    • why remember then that one "is empowered"To seize the EPO for a limitation in the context of a nullity action? Knowing that this is normally always possible according to the letter of theA105bis EPC...
  • does that mean that one "can"To limit during such an action in nullity, but that in case of limitation, the procedure of theA105bis EPC is only one of the "options"Possible?

You still have two hours ...

4) Conclusion

I admit to being a bit in the dark ...

Section 2.6. Place

Limitations or waivers are presented to the INPI (L613-24 CPI).

Section 2.7. Time limit

This limitation or waiver may be presented at any time (L613-24 CPI, 1st paragraph) from the publication of the mention of the grant of the French patent or the European patent.

Une telle requête peut être présentée jusqu’à l’expiration du brevet et même après l’expiration de ce dernier.

At any time means that even when a dispute is engaged (Court Appeal of Paris, pole 5, 1st ch., February 12, 2014):

[....] A voluntary limitation [...] before acting in infringement (or at any time, even after the litigation has begun), is possible [...]

It is even possible to present it during a call (Court of Appeal of Paris, Pole 5, 1st ch., September 27, 2016, RG n ° 2014/18000), while the patent had been recognized as new and inventive.

Section 2.8. taxes

A limitation fee (260 €) or waiver (27 €) must be paid (Order of 24 April 2008 on procedural fees collected by the INPI).

Section 2.9. Multiple limitations

It is quite possible to make several limitations.

In principle, and even if a holder makes several limitations, this is not an abuse (Court Appeal of Paris, pole 5, 1st ch., February 12, 2014) because the proprietor always has an interest in trying to consolidate his patent, according to precedents which are opposed to him.

It becomes an abuse if these limitations follow no logic and are dilatory. A civil fine is then incurred (L613-25 CPI)

Section 2.10. Effect of the petition on an ongoing litigation

When a limitation is requested from the INPI, the stay of proceedings is not automatic and is subject to the sovereign appreciation of the judge "according to the interest of a good administration of justice” (Paris District Court, 3rd Chamber, 4th Sect., Judge of the Pre-Trial Judgment, 10 April 2014).

In particular, if the limitation is weak and / or if the holder delays requesting a limitation, the judge will be likely to refuse the stay (Paris District Court, 3rd Chamber, 4th Sect., Judge of the Pre-Trial Judgment, 10 April 2014).

Once the limitation is granted, the limited set of claims becomes the subject of the litigation (by the retroactive effect of the article L613-24 CPI and L614-12 CPI for the action in nullity).

Chapter 3. Examination of the petition

Section 3.1. Formal examination

If the request does not contain the information mentioned above, the request is inadmissible (R613-45 CPI) and we must start again.

Section 3.2. Examination for the waiver

In this specific case, the INPI does not carry out any examination on the merits: if the request is admissible, the renunciation will be granted.

Section 3.3. Examination for the limitation

3.3.1. Principle

The INPI examines the request (R613-45 CPI) and can make two types of objections:

  • the limitation is not one;
  • the claims do not respect the conditions of the article L612-6 CPI : be clear and concise and rely on the description.

If there is an objection, the INPI notifies the applicant and gives a deadline to reply (R613-45 CPI).

Without an answer from him or in case of an unsatisfactory answer, a rejection of the request is made (R613-45 CPI).

3.3.2. What is a limitation?

In theory, a limitation is a restriction of the scope of the claims.

The idea of "limitation" is to constrain the changes of the owner in order to avoid that a modification of the demands makes brutally enter a third party within the scope of potential counterfeiters (ie for the safety of third parties).

The limitation can thus relate to a combination of claims, but also can introduce in its last elements of the description (C.cass. c. com. March 17, 2015, No. 13-28436).

Nevertheless, in practice, the limitations can be complex to analyze:

  • is a combination of dependent claims a limitation?
  • the transformation of a claim "System comprising X" into "System comprising X and Y" does seem to be a limitation. Nevertheless, this claim makes it possible to prosecute a counterfeiter manufacturing Y for the supply of means (L613-4 CPI) ...

3.3.3. Clear and concise and rely on the description?

Unlike the wording in the EPC (ie A123 (2) EPC vs A84 CBE), the formulation "to rely on the description"Means that the modifications introduced must be deduced"immediately and unambiguously the text as filed” .

Therefore, the Examiner may refuse a modification that is not derivable from the description.

3.3.4. Other controls?

No other verification will be done by the INPI (eg no examination of novelty, even if a third party transmits a relevant document, no examination of an exclusion from patentability).

Section 3.4. Withdrawing the request

This situation is not formally foreseen.

However, nothing prevents to submit such a request hoping that the INPI takes it into account.

Chapter 4. Decision

Section 4.1. Principle

Regarding the decision, it seems relatively traditional since no particular provision comes to specify it, but it must intervene within 12 months (R613-45-1 CPI).

Section 4.2. Challenge of the decision

4.2.1. Challenging rejection of the petition

If the INPI refuses to grant the limitation or the renunciation, it seems quite possible to do:

4.2.2. Challenge of the INPI's decision to grant the request

If the INPI grants the request, a third party may wish to challenge this decision.

At first glance, we might think that a lot of avenues of challenge are possible:

Nevertheless, the Paris Court of Appeal disagrees.

The Court of Appeal of Paris considered indeed that the law would have reserved this dispute to the judge of the nullities and not to the judge of the administrative appeal by the letter of the article L613-25 CPI.

Therefore, only the action in nullity would be possible for such a challenge (Court of Appeal of Paris, Pole 5, 1st ch, March 30, 2011, RG n ° 2010/10045 confirmed by C. cass. c. com. May 30, 2012, No. 11-21157).

Section 4.3. Publication of the amended fascicle?

There is no publication of the amended fascicle.

Section 4.4. Registration to GNI

The limitation or waiver is entered in the GNI (R613-45 CPI).

A notice of registration is sent to the author of the waiver or limitation (R613-45 CPI).

Section 4.5. Effects

The effects of such a decision are retroactive (L613-24 CPI and Court Appeal of Paris, pole 5, 1st ch., February 12, 2014).

Chapter 5. Primacy of the European Opposition Procedure?

If an opposition procedure is brought before the EPO, it seems quite possible to request a limitation of the French part of a European patent (Paris Court of Appeal, Pôle 5, 2e ch., June 26, 2015, RG n ° 2014/23888).

Thus, contrary to a European limitation to the EPO, the opposition proceedings have no impact on the French limitation.

Nevertheless, the subsequent decision of the Opposition Chamber still seems to be important:

  • If the patent is finally revoked (C. cass. c. com. May 24, 2017, No. 15-24416), the revocation decision effectively cancels the French party despite the prior limitation;
  • If the patent is maintained or modified, we are in the soft focus, unanswered for the moment
    • if it is kept in opposition, I would tend to say that the limitation made in France remains valid,
    • but in case of changes ...

Chapter 6. Claim Action

Section 6.1. and waiver request

If a third party has brought an action claiming ownership (L611-8 CPI), it is possible for him to notify the INPI to block any waiver by the registered owner (R611-20 CPI).

Section 6.2. and request for limitation

The question may arise for limitation.

Indeed, the article R611-20 CPI has:

From the day a person has provided the justification that he has commenced an action, the holder of the patent application or patent can not withdraw the application or renounce to the patent in full or to one or more of the claims

Is a limitation of a claim tantamount to giving up that claim?

I think this is a reasonable interpretation to the extent that the owner will at least give up the original wording of that claim.

In this case, any limitation is impossible as soon as a person justifies an action claiming ownership.

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