A reissue procedure at the U.S. Patent and Trademark Office (USPTO) allows a patent holder to correct a defect or error in an unexpired U.S. patent. Once accepted, the entire reissue application is examined under the same rules and requirements as a nonprovisional application. Any original and new claims are reviewed, if possible, by the same examiner who granted the original patent. A successful reissue procedure results in surrender of the original patent when the granted reissue application comes into effect.
The reissue procedure is not without limitations. For example, any defect or error must be significant enough to render the granted patent wholly or partly inoperable or invalid. This can include, for example, a defective specification, a defective priority claim, or the claims being too broad or too narrow in scope to cover the subject matter the inventor(s) had a right to claim. Broadening the scope of any claim to any extent is possible only if the reissue application is filed within two years of the original patent's grant, but adding narrower dependent claims is possible at any time during the life of the patent. Reissue cannot recapture claimed subject matter surrendered during prosecution of the original application.
The European equivalents of reissue—limitation and revocation procedures—were enacted by the European Patent Convention 2000 and came into effect in 2007. Requests for limitation and revocation allow a European patent holder to amend or revoke (i.e., surrender) a European patent using a centralized ex parte procedure at the European Patent Office (EPO). This avoids the need to file separate requests in each contracting state where the granted patent is in force.
While only the patent holder can file a request for limitation or revocation, these can be filed at any time during the term of a European patent. The request cannot be filed if the patent is subject to a pending opposition proceeding (Article 105a EPC). Moreover, limitation and revocation proceedings do not take priority over national proceedings. In situations where both occur, the national proceeding is stayed or continued based on national law or practice.
Limitation and revocation procedures, unlike reissue, do not require a defect or error that renders the granted patent "wholly or partly inoperable or invalid." The requester may provide information about the purpose of the request or why the request is allowable, but this information is not required. Rule 90 EPC explicitly states that the purpose underlying the request is of no relevance to the question of the request's allowability.
As set forth in Rule 92 EPC, a request for limitation or revocation must be in writing in one of the official languages of the EPO (English, French, or German). The request should identify the patent number, the states in which the patent has been validated, the requestor, and any other proprietors having an interest in the patent and the requestor's right to act on their behalf. Also required are any amended claims, description, and drawings. The current EPO fees are €1105 for limitation and €500 for revocation. Any deficiencies with the request are normally allotted two months' time for correction, although this period is extendable under exceptional circumstances.
If a request for limitation is accepted, the matter is sent to the Examining Division for processing. If the matter had previously undergone an opposition or limitation procedure, the patent as amended in the most recent procedure is examined. A requester may withdraw a request at any time, provided that it is still pending, but fees are not refundable. It is also possible to request a limitation or revocation following one or more earlier requests for limitation, whether accepted or not.
If a request for revocation is accepted, the Examining Division will revoke the patent and notify the requestor. The decision takes effect on the date of its publication in the European Patent Bulletin and applies to all contracting states where the patent was granted. It is not possible to selectively revoke a granted European patent in only some contracting states.
A limitation procedure is appropriate if new prior art comes to light that affects the validity of any of the claims or the claims have been found to have problems with clarity (such as missing essential features) or added subject matter that can be addressed by limiting their scope. With regard to claim amendments, the limitation procedure is restricted to assessing issues of clarity (Article 84 EPC) and allowable amendments (Article 123(2) & (3) EPC). A claim amendment must be fully supported and cannot add subject matter beyond the scope of the original application or result in the amended patent claiming subject matter extending beyond the scope of the originally granted claims. The Examining Division, however, will not determine if the subject matter of the claim amendment is patentable. As such, no new inquiry is made into novelty or inventive step.
Rule 95(2) EPC interprets "limitation" as meaning a reduction in the extent of protection conferred by the 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 claims are not allowed. Amending only dependent claims to introduce a new limitation is permitted. But introducing nonlimiting amendments to the claims or description is not permitted if the amendments are not required by the new limitation.
Rule 95(2) EPC allows one opportunity to make amendments during a limitation procedure. However, a response that addresses previous objections but gives rise to new objections will normally make a further communication necessary. The EPO should grant a request for oral proceedings if the request for limitation is not allowable, but no further amendments are possible during oral proceedings if the request has previously been amended.
Three months after the amended claims have been approved, the patent holder must pay a fee and have the amended claims translated into two official languages of the EPO. The decision to limit the patent takes effect on the date the decision is published in the European Patent Bulletin. Shortly afterwards, the EPO will publish the amended patent. Any decision rejecting a request or terminating a procedure by the Examining Division is appealable to the Boards of Appeal at the EPO.
Central limitation at the EPO provides a relatively quick and easy way to amend a patent to address issues that might affect its ability to be enforced in any of the member states. Unlike reissue in the United States, a request for central limitation cannot result in the European patent being found invalid and does not require the patent holder to make comments on prior art that may need to be put before the USPTO or courts in corresponding proceedings.
Published in Full Disclosure Patent Newsletter - June 2013
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