2.3 – Further processing

Question 1

What can an applicant do if they fail to reply in due time to a communication from the EPO?

Answer 1

They may request further processing of the European patent application under Art. 121(1).

Question 2

How much time is there to request further processing of an EPt application after a failure to observe a time limit?

Answer 2

Within two months of the communication concerning either the failure to observe a time limit or a loss of rights (Rule 135(1) EPC)

Rule 112 EPC: Noting of loss of rights.

Question 3

Requirements for a FP request to be successful:

Answer 3

• Payment of the prescribed fee and completion of the omitted act within two months of the communication concerning either the failure to observe a time limit or a loss of rights (Rule 135(1) EPC)
• Further processing may not be ruled out under Article 121(4) or Rule 135(2) EPC.

There is no requirement to explain the reasons for failing to comply with the time limit.

Question 4

Further processing vs Re-establishment of rights:

Answer 4

• FP under Art. 121 is more generally available than re-establishment under Art. 122.
• FP seen as the main remedy by the EPC for missed time limits.
• FP is available for all applicant-related missed time limits, apart from those specifically ruled out in Article 121(4) or Rule 135(2) EPC.
• Re-establishment is discretionary, whereas FP must be granted, provided the correct steps are taken in the time limit.

Question 5

Who can apply for FP?
When?

Answer 5

Who:
* Only the applicant may request further processing (so proprietors of a granted patent in opposition, limitation or revocation proceedings are not eligible).
* Cannot be requested by third parties.
* If an application is transferred to a new applicant, the new applicant must be recorded in the European Patent Register before they can request further processing.

When:
* The missed time limit must have been with regard to the EPO.
–> Therefore, FP is not applicable to time limits such as a national patent office (Article 121(1) EPC).

However, it is irrelevant whether the time limit is set in the EPC itself or by the EPO, and it is also irrelevant which legal consequences ensue from the missed time limit.

Question 6

How is FP requested?

Answer 6

By paying the fee for further processing and completing the omitted act (Rule 135(1) EPC).

• There is no need to file any reasons or arguments.
• There is no need to write a letter requesting further processing (no need for a written request).

Question 7

Time limits for further processing:

Answer 7

Failing to observe a time limit is often notified in a communication of loss of rights under R. 112(1) EPC.

• When a time limit is missed, the EPO notifies the applicant that they have failed to meet that time limit
  and that a loss of rights has occurred as a result.
• Both the payment of the fee and the completion of the omitted act must be done within a time limit of two months of notification of that communication

The applicant can request FP before the communication has been issued (see GL E-VIII, 2).

Not all events at the EPO are triggered by time limits (and so FP cannot be used).
For example, the period for filing a divisional (i.e. while the application is pending, see is not a time limit within the meaning of Article 121(1), but rather a condition of for the filing of divisional applications.
* Therefore, further processing is not available for the filing of divisional applications (GL A-IV, 1.1.1, last paragraph).

Question 8

What does FP do?

Answer 8

If FP is allowed, any legal consequences of missing the time limit are deemed not to have occured.

Question 9

Fees for FP:

Answer 9

Depends on the omitted act.

• If the time limit missed was for the payment of a fee, then the fee for further processing is 50% of the late fee.
• In all other cases, the fee is EUR 300 per omitted act (Article 2(1), item 12, RFees).
  –> For example, if both the filing of the written request for exam and the payment of the exam fee are not done in time, a combined further processing fee is due, which is made up of a flat fee (EUR 300) for omitting to file the written request and 50% of the examination fee (50% of EUR 1915) for failure to pay the examination fee (EUR 300 + EUR 958 = EUR 1258 total further processing fee) (GL E-VIII, 2).
• However, in the case of the late performance of the acts under Rule 71(3) EPC, (i.e. filing the translations of the claims and paying the fee for grant and publishing) the fee for further processing is only EUR 300 (Article 2(1), item 12, RFees).

Question 10

Time limits excluded from FP:

Answer 10

Article 121(4) EPC rules out:
1. the priority period under Article 87(1) EPC
2. the period for filing an appeal under Article 108 EPC
3. the period for filing a petition for review under Article 112a(4) EPC
4. the period for requesting further processing or re-establishment of rights

Re-establishment is available for 1-3 above, provided all due care was taken (as well as the period for requesting FP).

Rule 135(2) EPC rules out FP for the period for:
▪ filing a translation of the application under Rule 6(1) EPC
▪ defined in Rule 16(1)(a) EPC for using the remedies of Article 61(1) EPC after entitlement proceedings
▪ submitting information on biological material in Rule 31(2) EPC
▪ filing the translation of a divisional application in Rule 36(2) EPC
▪ filing a copy of the priority document in Rule 40(3) EPC
▪ paying renewal fees in Rule 51(2) to (5) EPC
▪ filing and correcting the declaration of priority in Rule 52(2) and (3) EPC
▪ remedying deficiencies noted in the examination on filing in Rule 55 EPC
▪ filing and withdrawing missing parts of the application under Rule 56 EPC
▪ filing corrected parts of erroneously filed application documents or parts under Rule 56a(1) and (3) to (7) EPC
▪ remedying deficiencies found in the examination of formal requirements in Rule 58 EPC
▪ correcting deficiencies in the priority claim defined in Rule 59 EPC
▪ indicating which of multiple independent claims are to be searched under Rule 62a EPC
▪ defining the subject-matter of the search under Rule 63 EPC
▪ paying further search fees in Rule 64 EPC
▪ applying for a decision on loss of rights in Rule 112(2) EPC
▪ paying further search fees for non-unitary inventions in Rule 164(1) EPC
▪ paying further search fees for non-searched inventions in Rule 164(2) EPC

Question 11

How can an applicant remedy a refusal of a request for extension of a time limit?

Answer 11

By requesting FP.

Question 12

Can FP be requested for PCT time limits?

Answer 12

Yes - the time limit for entry into the national phase is not ruled out under Article 121(4) and Rule 135(2) EPC.

The procedure for requesting FP in Euro-PCT applications is the same as discussed for European applications.

Question 13

Can the late filing of a divisional application be remedied by further processing or re-establishment of rights under the EPC?

Answer 13

No.

Further processing (Art. 121 EPC) and re-establishment of rights (Art. 122 EPC) only apply where a time limit has been missed.

The requirement under Rule 36(1) EPC that the earlier European patent application must be pending is a substantive condition, not a time limit.

Therefore, if a divisional is filed when the earlier application is no longer pending, this deficiency cannot be remedied by further processing or re-establishment (see J 10/12, reason 13; GL A-IV, 1.1.1).

The “pending” requirement isn’t a deadline you can miss - it’s a basic condition that must be true when you file the divisional.

Question 14

What is the time limit for requesting further processing under Rule 135(1) EPC?

Answer 14

Two months from notification of the communication concerning the failure to observe a time limit or the loss of rights.