PATENT LIMITATIONS
The new provisions Te new French provisions enable this uncertainty to be removed.
It is now possible to limit a French patent using the features found in the description or in the claims.
Tese provisions are given in articles L.613- 24, L.613-25, L.614-12 and R.613-45 of the Intellectual Property Code (IPC).
Article L.613-24 provides that the patentee may, at any time, limit the scope of its patent by amending one or more claims.
As specified by article L.613-25, this may be carried out during infringement or revocation proceedings.
The conditions for limitation
Article R.613-45 IPC gives the conditions for admissibility of a limitation. In addition to the formal aspects, such as the payment of a fee, article R.613-45 provides that the request for limitation may be rejected if:
• The amended claims do not constitute a limitation relative to the former claims of the patent, or
• They do not comply with the provisions of article L.612-6 IPC.
Article L.612-6 IPC provides that “the claims define the subject matter of the requested protection. Tey must be clear, concise and based on the description”.
Tus, as at the European Patent Office, the French examiner must check that the limited claims comply with provisions matching those of articles 123(3) and 84 EPC.
“ BEFORE THE NEW LAW INTRODUCED THE LIMITATION PROCEDURE, IT WAS PRACTICALLY IMPOSSIBLE FOR A PATENTEE TO AMEND ITS PATENT OTHER THAN BY ABANDONING CERTAIN CLAIMS SO AS TO MAINTAIN ONLY SUBSIDIARY CLAIMS.”
Yet, it is surprising that the French legislator did not require the examiner to examine whether or not the amended claims extend beyond the content of the application as filed, as in article 123(2) EPC.
Of course, a patent that is supposedly limited such that its subject matter extends beyond the content of the initial application could be revoked by a court, since that is a ground for revocation provided by article L.613-25 (c) IPC.
It is, however, regrettable that patents may be limited in conditions such that they could, in the end, be revoked by a court.
It is to be hoped that the French legislator will modify the limitation procedure to harmonise it with that of the EPO.
Third parties may contest the limitation decision
Te request for limitation must be presented before INPI, which examines the request to see if it conforms with certain regulatory provisions (article R.613-45).
Article L.613-24 further specifies that the effects of the limitation are retroactive to the date of filing of the patent application.
Te new French provisions do not explicitly state whether the French part of a European patent may be limited in proceedings before INPI.
However, it would appear from recent practice at INPI that patents of European origin may be limited before INPI.
As provided by French law, the limitation procedure does not explicitly state that third parties may contest the limited patent.
However, the Intellectual Property Code provides that any decision rendered by INPI may be appealed to the Court of Appeals.
In a recent patent infringement case, the patentee filed a request for limitation of its patent before INPI, a few days before the hearing on the merits of the case. It also petitioned for a stay in the infringement proceedings until a decision was handed down by INPI.
INPI accepted the request for limitation. However, the alleged infringer appealed against
54 World Intellectual Property Review November/December 2010
www.worldipreview.com
Thierry Caen is a French and European IP attorney, and Doctor of Pharmacy. He is a partner at Santarelli, in charge of pharmacy, chemistry and biotechnology patent activities.
Caen assists his clients in constituting their patent portfolio and specialises in patent litigation. He also has expertise in supplementary protection certificates (SPCs).
the decision of the director of INPI and, in turn, petitioned for the infringement proceedings to be stayed until the Court of Appeals had ruled as to the well-foundedness of the INPI decision accepting the limitation.
It is clear that the whole of this procedure considerably slowed down the infringement proceedings.
So the request for limitation may be used by the patentee when it sees that its patent is at risk of revocation, but may then also be used by the alleged infringer to delay the decision of the Court of First Instance.
Nevertheless, generally speaking, INPI is diligent in rendering its decisions on limitation requests.
In our experience, INPI renders decisions within two or three months of filing the limitation request.
The limited claims
Clearly, a main claim may be limited during the limitation procedure.
However, it is not necessary for all the independent claims to be limited in the same way.
INPI has therefore accepted to limit the product claim 1 of a patent, whereas it was possible for the independent claim for use of that product to be maintained with its original scope.
Tierry Caen is a partner at Santarelli. He can be contacted at:
thierry.caen@
santarelli.com
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