An International Guide to
Patent Case Management for Judges

Full Guide

Download full guide Download current chapter

12.4.5 Limitation of the patent during invalidation proceedings

During the invalidation proceedings, Article 103(4) of LP-2015 permits the patent owner to “limit the scope of the patent by amending the claims” in order to defeat any alleged grounds for invalidation. “The proceedings will then be based on the patent as so limited.”

It must be recalled that limitation can result neither in the addition of subject matter, as explained earlier, nor expansion of the scope of protection for the claim limited. As a first condition for a limitation to be ultimately effective, the limits must not be exceeded, and as a second, the amended text of the claim must overcome the alleged cause of invalidity.