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Guidelines for Examination

 
 
5.
Formal procedure for limitation when the request is allowable 

If the request for limitation is allowable, then according to Rule 95(3) the Examining Division must communicate this to the requester and invite him to pay the prescribed fee and file translations of the amended claims into the other two official languages within a period of three months.

The nature of the communication under Rule 95(3) inviting the requester to pay the prescribed fee and file translations of the claims is different from the communication of the intention to grant during examination proceedings under Rule 71(3). During limitation, the text filed by the requester is deemed to be approved, whereas at this stage in examination the text is a version proposed to the applicant and subject to his approval.

Once the requester has received the communication under Rule 95(3), he can only pay the fee and file the translations or have his request rejected for failure to do so. Therefore the Examining Division may not, with the communication under Rule 95(3), make amendments of its own motion to the claims of a request for limitation in order to render them allowable or adapt the description of its own motion to the limited claim(s). The provisions of Art. 113 would not be met, since the requester does not have an opportunity to contest or comment on the amendments made.

As in opposition proceedings, the requester benefits from a two-month period of grace for reply with payment of a surcharge (Art. 2, No. 9, RFees). Re-establishment of rights is available.

If the requester pays the fee and files the required translations in due time, the Examining Division will decide to limit the patent (Art. 105b(2) and Rule 95(3), last sentence). This takes effect on the date on which the mention of the decision is published in the Bulletin.

As soon as possible after this, the amended specification will be published by the EPO. The form of publication of the amended patent specification is defined in Rule 96, Rule 73(2) and (3) and Rule 74. The procedure for this is the same as in opposition proceedings.

As for revocation (see D-X, 3), the effect of the decision to limit the patent is that the patent is limited ab initio.