Request for limitation (of a patent)

The limitation request is the request by which the holder of a patent voluntarily reduces the scope of its claims after grant. It allows part of the protection to be given up in order to save the rest of the title. In other words, the limitation request is a defensive tool against a nullity action or a piece of prior art discovered late.

The legal framework of the limitation request

In French law, Article L. 613-24 of the Intellectual Property Code allows the owner of the patent to limit its claims at any time, by a request addressed to the INPI. For the European patent, Article 105a of the European Patent Convention organises a centralised limitation procedure before the European Patent Office, with effect in all designated states. In both cases, the limitation must neither extend the protection nor add new matter. It takes effect retroactively to the filing date.

The limitation request in litigation

First, limitation may be requested in the course of nullity proceedings, which often leads the court to stay the case or to rule on the title as limited. Second, it forces the opponent to redirect its argumentation towards new claims. A late limitation may however be perceived as an admission of weakness and affect the assessment of damages for the earlier period. Before the UPC, amendment of the patent follows strict procedural rules, with short deadlines and a limited number of auxiliary requests.

Key points

In practice, a limitation request must be prepared upstream, on the basis of a complete analysis of the state of the art. It differs from the limitation of the patent ordered by the court and from opposition. The firm advises patentees on the desirability and timing of a limitation in the context of a patent nullity action.

The request is a procedural application subject to examination; patent limitation denotes the reduction in scope resulting from its acceptance.