Strategic use of limitation procedures


Annelise Holme

The European limitation procedures were enacted by the European Patent Convention 2000 and came into effect in 2007. Requests for limitation allow a European patent proprietor to amend a European patent using a centralised ex parte procedure at the European Patent Office.

This avoids the need to file separate requests in each contracting state where the granted patent is in force.

Limitation proceedings are designed to avoid costly national disputes over the validity of a European patent and to enhance legal certainty. While only the proprietor can file a request for limitation, the request can be filed at any time during the term of a European patent. However, the request cannot be filed if the patent is subject to pending opposition proceedings. 

A request for limitation must include amended claims that constitute a limitation of the scope of protection with respect to previous claims. Claim amendments that merely clarify or encompass different subject matter are not considered a ‘limitation’. Likewise, amendments to the description that only improve the patent or constitute cosmetic changes not necessitated by the limited claim are not allowed. It is permitted to amend a dependent claim, by introducing a new limitation, but it is not permitted to add new depending claims if such depending claims have not been caused directly by the introduced claim limitation.

EPO, EPC, patent limitation, patent applications