One of the major novelties introduced by the EPC 2000 is the central limitation proceedings (Articles 105(a), 205(c) and Rules 90-96), according to which the patent owner can request the central limitation of a granted European patent. According to the intention of the EPO, this should be a very quick administrative procedure. From the viewpoint of the national practitioner, the duration of the proceedings are especially interesting with respect to pending national revocation and/or infringement actions.

At the end of July 2008, the first limitation procedure was completed. Considering timing issues, the whole limitation proceedings took considerably longer than they were expected to. The time from the patentee's request to limit its European patent until the entry into force of the limitation took more than seven months! What does this mean for national litigation proceedings in Austria?

Interestingly, the Austrian legislator has – so far – not provided for any statutory amendment regarding a link between the central limitation proceedings before the EPO and national revocation or infringement proceedings. In practice, problems arising in revocation and litigation proceedings on the merits will be quite small. As these proceedings usually take one to two years in the first instance in Austria it seems very likely and reasonable that the courts (if there is no statutory provision) will suspend the decision at first instance to await the outcome of the central limitation procedure in cases where the limitation procedure is still pending.

However, what remains completely unclear is how the courts will proceed in proceedings for a preliminary injunction, which is of very high importance in day-to-day practice. These interim proceedings are usually decided in first instance between two weeks and three months in Austria. Accordingly, it would be strongly against the interests of the claimant to suspend interim proceedings for up to eight months until the EPO has taken its decision on the limitation request. Justice would seem to be served best if the court bases its decision on the limited version of the patent which, however, has not yet been accepted by the EPO. Whether the court will find a convincing reasoning to base its decision on a potentially limited patent (even if the limited version has no official status whatsoever) remains to be seen.

But it is not only in revocation and infringement proceedings where a link between the central limitation procedure before the EPO and national proceedings is missing. The Austrian Patent Act is also completely silent with respect to ownership issues and a prior national limitation of the national part of a European patent; to increase legal certainty, some statutory basis concerning the impact of central limitation proceedings on national law should be provided for in the Austrian Patent Act.

Rainer Beetz

SONN & PARTNER Patentanwälte
Riemergasse 14
A-1010 Vienna
Austria
Tel: +43 1 512 84 05
Fax: +43 1 512 98 05
office@sonn.at
www.sonn.at