Patent limitation

Patent limitation is the narrowing of a granted patent’s scope by amendment of its claims. A proprietor may seek limitation to address a validity objection while retaining protection for commercially relevant subject matter. It differs from a court’s revocation of a patent in part, although both can result in narrower surviving claims.

The legal framework

In France, Article L. 613-24 of the Intellectual Property Code permits the proprietor to surrender one or more claims or limit the patent by amending its claims, through an application to the INPI.

For a European patent, Article 105a EPC establishes a central limitation procedure before the EPO. A request under that provision may not be filed while opposition proceedings concerning the patent are pending. Amendment in opposition follows its own procedural framework.

Under Article 105b EPC, the decision applies in all Contracting States for which the European patent was granted. National limitation and amendment in litigation must be distinguished from this central procedure.

Conditions and effects

The amended claims must have a proper basis in the application as filed. Limitation cannot be used to introduce added subject matter or extend the protection conferred by the granted patent. Each amendment should therefore be assessed against both the original disclosure and the granted claims.

Limitation has retrospective consequences for the patent’s effects to the extent that protection is restricted. Its implications for pending infringement proceedings, licences and royalties require separate analysis. A narrower claim is useful only if it remains valid and covers the activity that matters commercially.

Limitation as a litigation strategy

A proprietor facing a revocation action or counterclaim should assess possible fallback positions early. The analysis combines the prior art, the basis for amendments and a fresh infringement comparison against the proposed claims.

The available procedural route, timing and admissibility requirements depend on the patent and forum. Dhenne Avocats advises on limitation strategy and represents clients in validity disputes before the French courts and the UPC.

Related resources

UPC Litigation Watch · Unified Patent Court

Dhenne Avocats represents clients in patent disputes before the French courts and the UPC. Discuss a dispute with the firm.

This glossary entry provides general information and is not advice on an individual matter.

Limitation denotes the reduction in patent scope. A request for limitation initiates the procedure and does not establish that the request will be allowed.