Limitation and Disclaimer

Purpose of these procedures

Article L613-24 CPI provides:

The proprietor of the patent may at any time either disclaim the patent in whole or one or more claims, or limit the scope of the patent by amending one or more claims.

These two procedures are in fact very similar:

• Disclaimer is a procedure allowing the annulment of one’s own patent (as granted, amended following an opposition in Europe, or already limited):
  • retroactively (L613-24 CPI, fourth paragraph) and
  • this may be useful, for example, to avoid a lengthy and costly nullity action or pursuant to a settlement agreement between two parties;
• Limitation is a procedure allowing the restriction of the scope of one’s own patent (as granted, amended following an opposition in Europe, or already limited):
  • retroactively (L613-24 CPI, fourth paragraph) and
  • this may be useful, for example, upon the discovery of prior art after grant.

Request

Form

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

Content

The request contains (R613-45 CPI):

• The designation of the patent in question (only one may be included); the amended claims (in case of limitation); the amended description and drawings (if applicable); the capacity of the applicant; a signed special power of attorney authorizing the disclaimer or limitation (if the applicant is neither the registered proprietor nor an IP representative or attorney); if there are multiple proprietors, the request or power of attorney must be signed by all registered proprietors; proof of payment of the official fee for disclaimer or limitation; consent from all persons holding a real right over the patent (e.g., non-exclusive license, exclusive license, pledge, etc.) insofar as this right has been recorded in the National Register of Patents.

Representation

If the request is not submitted by the proprietor(s), it appears entirely possible for anyone to submit the request (R613-45 CPI):

• No power of attorney will be required for IP representatives or attorneys;
• a special power of attorney is necessary otherwise.

Motivation

No element justifying the reason for the limitation or disclaimer is prescribed by the code.

Patent subject to the request

French patent

Outside judicial proceedings

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

Within judicial proceedings

Within judicial proceedings, the answer is less clear.

Indeed, Article L613-25 CPI provides that a limitation is possible during litigation but does not explicitly state before whom it must be submitted.

Some have attempted to submit it before the judge but without much success (Tribunal de Grande Instance de Paris, ch 03 sect. 01, 9 November 2010, RG no. 0912713 – valid even though this involved a European patent, as Article L613-25 CPI was cited).

French part of a European patent

Position of French case law

According to case law, it also appears possible to limit the French part of a European patent (Court of Appeal of Paris, Pole 5, 2nd ch., 26 June 2015, RG no. 2014/23888).

According to the court, although Article L614-12 CPI provides for the possibility of seizing the EPO if a nullity action is brought, no text limits the scope of Article L613-24 CPI, and the INPI may still be seized.

Analysis of the EPC: Limitation Outside Judicial Proceedings

Although A2 EPC provides that the French part of a European patent is subject to the same regime as a French patent, this identity of regime is subject to the condition that the EPC does not provide otherwise.

However, some consider that A105bis EPC grants exclusive competence to the EPO (outside judicial proceedings):

The request must be filed with the European Patent Office in accordance with the Implementing Regulations.

This statement should be qualified, as I find there is genuine ambiguity in this article, which may call this « exclusive competence » into question:

• must the request be filed with the EPO, and in accordance with the Implementing Regulations? or
• must the request be filed in accordance with the Implementing Regulations when it is filed with the EPO?

This changes everything!

You have two hours…

Analysis of the EPC: Limitation Within Judicial Proceedings

Within the framework of judicial proceedings, the third paragraph of A138 EPC should be considered.

In proceedings before the competent court or authority relating to the validity of the European patent, the proprietor of the patent shall be entitled to limit the patent by amending the claims. The patent as thus limited shall form the basis for the proceedings.

No further guidance is provided, leaving national law to determine the modalities.

Thus, some still argue that L614-12 CPI (third paragraph) grants this competence for limitation to the EPO within the framework of a nullity action, unless such limitation results from a court decision partially revoking the French part of the European patent (L614-12 CPI, second paragraph).

In the context of a nullity action against the European patent, its proprietor is entitled to limit the patent by amending the claims in accordance with Article 105bis of the Munich Convention; the patent as thus limited shall constitute the subject of the nullity action brought.

But once again, there is ambiguity:

• does this mean that one may limit during such a nullity action, but that if limitation occurs, it is necessary to do so via the procedure under A105bis EPC?
  • why then state that one is entitled to file with the EPO for limitation within the framework of a nullity action? Given that this is normally always possible according to the wording of A105bis EPC…
• does this mean that one may limit during such a nullity action, but that if limitation occurs, the procedure under A105bis EPC is only one of the options available?
  • why then not indicate that limitation before the INPI is also possible, as stated by the Paris Court of Appeal, Division 5, Chamber 2, June 26, 2015, Case No. 2014/23888?

You have two more hours…

Conclusion

I must admit I am somewhat in the dark…

Place

Limitations or disclaimers are filed with the INPI (L613-24 CPI).

Time limit

This limitation or disclaimer may be filed at any time (L613-24 CPI, first paragraph) from the publication of the mention of grant of the French patent or the European patent.

Such a request may be filed until the expiration of the patent and even after its expiration.

“At any time” means that even when litigation is pending (Cour d’appel de Paris, Pôle 5, 1st ch., 12 February 2014):

[…] a voluntary limitation […] before initiating infringement proceedings (or at any time, even once litigation has commenced), is possible [ …]

It is even possible to file it during an appeal (Cour d’appel de Paris, Pôle 5, 1st ch., 27 September 2016, Case No. 2014/18000), even though the patent had been found to be novel and inventive.

Official fees

An official fee for limitation (260 €) or disclaimer (27 €) must be paid (Order of 24 April 2008 on official fees for procedures collected by the INPI).

Multiple limitations

It is entirely possible to file several limitations.

In principle, and even if a proprietor files several limitations, this does not constitute an abuse (Cour d’appel de Paris, Pôle 5, 1st ch., 12 February 2014) since the proprietor always has an interest in attempting to strengthen their patent in response to prior art cited against it.

This becomes an abuse if these limitations follow no logical pattern and are merely dilatory. A civil fine may then be imposed (L613-25 CPI).

Effect of the request on pending litigation

When a limitation is requested from the INPI, a stay of proceedings is not automatic and is subject to the court’s sovereign discretion “in the interest of the proper administration of justice” (Paris Regional Court, 3rd ch., 4th sect., order of the judge in charge of case management, 10 April 2014).

In particular, if the limitation is minor and/or if the proprietor delays in requesting a limitation, the court may be inclined to refuse the stay (Paris Regional Court, 3rd ch., 4th sect., order of the judge in charge of case management, 10 April 2014).

Once the limitation is granted, the set of limited claims becomes the set at issue in the litigation (due to the retroactive effect of Article L613-24 CPI and Article L614-12 CPI for nullity actions).

Examination of the request

Formal examination

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

Examination for disclaimer

In this specific case, the INPI does not conduct any substantive examination: if the request is admissible, the disclaimer will be granted.

Examination for limitation

Principle

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

• the limitation is not a limitation;
• the claims do not comply with the conditions of Article L612-6 CPI: they must be clear and concise and be based on the description.

If there is an objection, the INPI issues a notification to the applicant and grants a time limit to respond (R613-45 CPI).

If no response is provided or if the response is unsatisfactory, the request is rejected (R613-45 CPI).

What is a limitation?

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

The concept of « limitation » is to constrain the modifications made by the proprietor to prevent a change in the claims from suddenly bringing a third party within the scope of potential infringers (i.e., for the legal certainty of third parties).

A limitation may thus apply to a combination of claims but may also introduce elements from the description into the claims (C.cass. ch. com. 17 March 2015, No. 13-28436).

However, in practice, limitations can be complex to analyze:

• Is a combination of dependent claims a limitation?
• Transforming a claim « System comprising X » into « System comprising X and Y » does appear to be a limitation. Nevertheless, this claim allows for the pursuit of an infringer manufacturing Y for the supply of means (L613-4 CPI)…

Clear and concise and based on the description?

Unlike the wording in the EPC (i.e., A123(2) EPC vs A84 EPC), the phrase « based on the description » means that the amendments introduced must be directly and unambiguously derivable from « the application as filed« .

Therefore, the Examiner may refuse an amendment that is not derivable from the description.

Other checks?

The INPI will not carry out any other verification (e.g., no examination of novelty, even if a third party submits a relevant document, no examination of an exclusion from patentability).

Withdrawal of the request

This situation is not formally provided for.

Nevertheless, there is nothing to prevent submitting such a request in the hope that the INPI will take it into account.

Decision

Principle

Regarding the decision, it appears relatively standard since no specific provision governs it, but it must be issued within a period of 12 months (R613-45-1 CPI).

Challenging the decision

Challenging a rejection of the request

If the INPI refuses to grant the limitation or the disclaimer, it appears entirely possible to:

• file a reconsideration request;
• file an action for annulment.

Challenging 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 numerous avenues of challenge are available:

• reconsideration request;
• action for annulment;
• action for invalidity of the patent under Article L613-25 CPI (c) or d)).

However, the Paris Court of Appeal does not share this view.

The Paris Court of Appeal has indeed considered that the law would have reserved this challenge to the invalidity judge and not to the administrative appeal judge, as per the wording of Article L613-25 CPI.

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

Publication of the amended specification?

There is no publication of the amended specification.

Registration in the National Register of Patents

Limitations or disclaimers are registered in the National Register of Patents (R613-45 CPI).

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

Effects

The effects of such a decision are retroactive (L613-24 CPI and Cour Appel de Paris, pôle 5, 1er ch., 12 February 2014).

Primacy of the European opposition procedure?

If an opposition procedure is initiated before the EPO, it appears entirely possible to request a limitation of the French part of a European patent (Cour d’appel de Paris, Pôle 5, 2e ch., 26 June 2015, RG n°2014/23888).

Thus, unlike a European limitation at the EPO, the opposition procedure has no impact on the French limitation.

Nevertheless, the subsequent decision of the opposition division still appears to be significant:

• If the patent is ultimately revoked (C. cass. ch. com. 24 May 2017, n°15-24416), the revocation decision indeed results in the annulment of the French part despite the prior limitation. If the patent is maintained or amended, we are in a legal gray area, with no answer for the time being:
  • if it is maintained in opposition, I would tend to say that the limitation carried out in France remains valid,
  • but in the event of amendments…

Action for entitlement

and request for renunciation

If a third party has initiated an action for entitlement (L611-8 CPI), it is possible to notify the INPI to block any renunciation by the registered proprietor (R611-20 CPI).

and request for limitation

The question may arise for limitation.

Indeed, Article R611-20 CPI provides:

From the day on which a person has provided proof that they have initiated an action, the proprietor of the patent application or the patent may not withdraw the application or renounce the patent in whole or one or more of the claims it contains.

Does limiting a claim amount to renouncing that claim?

I believe this is a reasonable interpretation insofar as the proprietor will at least renounce the original wording of that claim.

Under this assumption, any limitation is impossible as soon as a person provides proof of an action for entitlement.