How to get a European patent

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As patent proprietor you may request the revocation or limitation of your own patent. You can file the request at any time after grant, after opposition proceedings or even after expiry of the patent. However, a request for revocation or limitation filed while opposition proceedings in respect of the European patent are pending is deemed not to have been filed, since the opposition proceedings have precedence. If limitation proceedings are pending at the time of filing of an opposition, the limitation proceedings are terminated and the limitation fee is reimbursed.

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Requests must be filed direct with the EPO. The general provisions for filing a European patent application (see Rules 35 ff) and the need for professional representation for non-resident patent proprietors apply (see points 58-59). Furthermore, the request is deemed to be filed only when the limitation or revocation fee is paid.

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The subject of limitation or revocation proceedings is the European patent as granted or as amended in opposition or (earlier) limitation proceedings. Since limitation is effected by means of amendment of the claims, the request must include a complete set of the amended claims (and the description and drawings if applicable). If these or the general requirements regarding languages and representation (see points 42-45 and 58-66) are not met, the Office invites you to correct any deficiencies within a period to be specified, normally of two months. If you do not correct the deficiencies within this period, the request is rejected as inadmissible. Re-establishment of rights is however available. The decision rejecting the request is open to appeal.

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If the request is for revocation and is admissible, then the examining division revokes the patent and communicates this to the requester.

193

If the request for limitation is admissible, the examining division proceeds with its examination of the request. The basis for the examination is the patent as granted or amended in opposition or limitation proceedings. Where there have already been both opposition and limitation proceedings, then the basis for the examination is the patent as amended in the most recent of the procedures. The examining division only examines whether the amended claims constitute a limitation with respect to the claims as granted or amended and whether they are clear and concise and supported by the description and do not contain subject-matter which extends beyond the application as filed.

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The term 'limitation' means a reduction in the scope of protection of the claims. Clarifications or changes made simply to protect different subject-matter are not considered to be limitations. If there are any deficiencies, you will be invited to correct them within a period generally set to two months.

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If the request for limitation is allowable, you will be informed accordingly and invited to pay the prescribed fee for an amended specification and to file a translation of the amended claims into the other two official languages within a period of three months. The procedure for this is the same as in opposition proceedings. If you pay the fees and file the translations as set out above in due time, then the examining division will limit the patent. If not, the request will be refused. The European patent specification as limited will be published and a new certificate issued to you.

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The decision to limit the European patent takes effect on the date on which it is published in the Bulletin. Its effect is to limit the patent ab initio.