4.3.4 Points to be disregarded

In limitation proceedings, there is no examination as to why a request for limitation was filed or whether the goal of the limitation has been achieved, for example if the amended and limited claims are truly novel vis-à-vis a particular prior-art document.

In general, there is no need to verify whether the limited claims contravene any of Arts. 52 to 57. It may however happen that limitation results in prima facie non-compliance with the patentability criteria, e.g. Art. 53, in which case the examining division will communicate this non-compliance to the requester.

Example

A granted claim directed to a generic plant is limited to a specific plant variety. As the amended claim then relates to a plant variety per se it is excluded from patentability under Art. 53(b) (G 1/98).