August 6, 2020
Authored and Edited by Sanam Habib; Nicholas Fox
Update (22/2/24): Note that the EPO abolished its “10 day notification rule” for communications issued on or after 1 November 2023.
Further processing is the standard remedy whenever a deadline is missed during prosecution of a European patent application.
The requirements for an allowable request for further processing are:
Example:
No, there are three different types of further processing fees.
Whilst the amount of the further processing fee is fixed by the EPC, the number of fees due can depend on the nature of the missed Communication. Applicants should therefore always check how many acts and fees are due.
Examples of some of the more common missed deadlines and the acts and fees which are due are set out below:
Filing fee and additional page fees not paid |
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Search fee not paid |
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Failure to respond to search opinion and pay examination and designation fees |
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Failure to request examination and pay examination fees |
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Failure to enter regional phase before 31-month deadline
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Failure to respond to examination report |
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Failure to respond to the issuance of a proposed text for grant under Rule 71(3) EPC when no excess claims fees are due |
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Failure to respond to the issuance of a proposed text for grant under Rule 71(3) EPC when excess claims fees are due |
Same as above plus: 4. Payment of excess claims fees |
No. Although further processing is available to remedy most missed deadlines, some deadlines are excluded from further processing. In many cases this is because either the deadlines are administrative in nature (e.g. the deadlines for filing appeals or for requesting further processing themselves) or else because the EPC provides other remedies if those deadlines are missed.
Specifically, further processing is ruled out for the following:
Provided the requirements for further processing are met, the EPO will grant the request for further processing. However, if the requirements are not met, the EPO will reject the request.
If the EPO does reject a request for further processing, the legal consequence of not observing a time limit would take effect at the expiry of the normal due date (not the two-month period as mentioned above). This also applies when the further processing period has expired or has not been requested.
Example:
No, a formal written request for further processing is not required.
Examples:
No, Article 121(1) EPC states that:
“if an applicant fails to observe a time limit…he may request further processing…”.
The use of the term “applicant” restricts the use of further processing to prosecution proceedings relating to a pending application.
Further processing cannot be used for granted patents and opposition proceedings.
The date of notification of the loss of rights is the later of:
Example:
If the EPO is shut on the day when the deadline for requesting further processing falls due (e.g. the deadline falls due on a weekend or a national holiday), then the deadline for response is extend to the next working day when the EPO is open.
Yes, the loss of rights and the request for further processing will appear on the EPO register.
No. If an applicant completes the omitted act and pays the required fee for further processing by the appropriate deadline, the fact that the original deadline for response was missed has no legal effect whatsoever.
Re-establishment of rights may be used to remedy a missed further processing deadline. However, unlike further processing in which a failure to act or pay a fee in good time is forgiven merely on payment of an extra fee, re-establishment of rights requires an applicant to demonstrate that the failure to act or pay a fee was despite all due care having been taken. Hence re-establishment of rights is only available in exceptional cases.
Yes, further processing can be used if the deadline for entry of a PCT application into the regional phase is missed.
Example:
Further, once a PCT application has entered the regional phase it is treated the same as any other European patent application and, if a Euro-PCT application is refused or deemed as withdrawn following the non-observance of a time limit the applicant may request further processing.
For questions or further information, please contact your Finnegan Attorney.
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