Further processing

Conditions

In principle, it is possible to request further processing:

• if there is a failure to meet a time limit during the grant procedure (A121(1) EPC, including ex parte appeal proceedings relating to the grant procedure);
• if the request for further processing is filed within 2 months from the notification indicating (i) the failure to meet the time limit or (ii) a loss of rights (R135(1) EPC). Of course, it is possible to file this request before receiving any notification:
  • the omitted acts must be completed within the same period, together with a late payment fee of [montant_epo default= »240 € » name= »A2(1).12 RRT »] (R135(1) EPC and A2(1).12 RRT);
  • the unpaid official fees must be paid within the same period, together with a late payment fee amounting to 50% of the unpaid amount (R135(1) EPC and A2(1).12 RRT);
• if this further processing is requested by the applicant (i.e., the person recorded in the European Patent Register via A127 EPC together with R143(1) f) EPC, T656/98) or their representative.

Form and official fee

Form

There is no specific form required for this request (for example, it is not necessary to submit it in writing).

The request is made by paying the prescribed official fee (R135(1) EPC and EPC Guidelines E-VII 2).

Official fee

Principle

The further processing official fee is (A2(1).12 RRT):

• 50% of the official fee if the delayed act is the payment of an official fee;
• [montant_epo default= »240 € » name= »A2(1).12 RRT »] in other cases.

Normally, this is an official fee per missed act: for example, if the acts for entry into the European phase of a PCT application are missed (certain requirements are listed in R159(1) EPC), the further processing official fees can be very high.

Additionally, in the case of a failure to respond to a communication under Rule 71(3) EPC, it is usually necessary to pay:

• a standard further processing official fee for the failure to respond to the objections of the Examining Division (R70bis(1) EPC or R70bis(2) EPC);
• 50% of the examination fee (R70(1) EPC) or a standard further processing official fee for the failure to confirm examination (R70(2) EPC);
• 50% of the designation fee (R39 EPC).

Special official fee for actions under R71(3) EPC

If the proprietor fails to perform the necessary actions to respond to a R71(3) EPC communication (submission of translation, payment of official fees, etc.), a single official fee of [montant_epo default= »240 € » name= »A2(1).12 RRT – further processing for 71(3) »] is due for all these missed acts (A2(1).12 RRT).

Acknowledgement of receipt request

It is possible to request the EPO to return an acknowledgement of receipt upon receipt of the further processing official fee (OJ 1979, 336, which in fact applies to any submission of documents after filing with the EPO).

Legal consequence

If the acts mentioned above are performed, the legal consequences of the failure to meet the time limit are deemed never to have occurred (A121(3) EPC).

Loss of Rights

In the event of a loss of rights, the EPO notifies the party in accordance with R112 EPC.

It is often useful to request a decision at the same time as paying the further processing official fee. If the EPO decides that the loss of rights was not justified, the further processing official fee will be refunded, as it was paid without cause.

Exceptions

There are, however, a few cases of non-observance in which further processing is not available (these time limits benefit from restitutio in integrum under A122(1) EPC, unless otherwise provided):

• non-observance of the priority time limit under A87(1) EPC;
  • an applicant normally has a time limit of 12 months to file an application claiming priority from an earlier application;
  • this exclusion is provided for in A121(4) EPC;
  • this time limit nevertheless benefits from restitutio in integrum (A122(1) EPC) with a reduced time limit of 2 months (R136(1) EPC).
• non-observance of the appeal time limit under A108 EPC;
  • an appellant normally has a time limit of 2 months from notification of a decision to file an appeal against it; in addition, a statement of grounds must be filed within a time limit of 4 months from notification of the decision.
  • this exclusion is provided for in A121(4) EPC;
• non-observance of the time limit for review under A112a(4) EPC;
  • an appellant normally has a time limit of 2 months from notification of a decision of a board of appeal to request a review thereof;
  • this exclusion is provided for in A121(4) EPC;
  • this time limit benefits from restitutio in integrum (A122(1) EPC) with a reduced time limit of 2 months (R136(1) EPC).
• non-observance of the further processing time limit under R135(1) EPC;
  • this is normal, otherwise the « snake would bite its own tail » …
  • this exclusion is provided for in A121(4) EPC;
• non-observance of the restitutio in integrum time limit under R136(1) EPC;
  • an applicant normally has a time limit of 2 months from the removal of the obstacle, but not exceeding 12 months from the expiry of the unobserved time limit;
  • this is normal, otherwise it would be possible to chain « further processing » – « restitutio » – « further processing » – etc. indefinitely;
  • this exclusion is provided for in A121(4) EPC;
  • this time limit benefits from neither restitutio in integrum nor further processing;
• non-observance of the time limit for filing a translation of the application under R6(1) EPC;
  • the applicant has a time limit of 2 months from the filing date to provide a translation thereof if the description is not drafted in an official language of the EPO;
  • this exclusion is provided for in R135(2) EPC;
• non-observance of the time limit for action where the application was filed by an unauthorized person under R16(1)(a) EPC;
  • a third party must act within a time limit of 3 months after the decision recognizing their entitlement to the patent has become final;
  • this exclusion is provided for in R135(2) EPC;
• non-observance of the time limit for providing information in the context of a deposit of biological material under R31(2) EPC together with R31(1)(c) EPC and R31(1)(d) EPC;
  • a third party must provide evidence that the third party has authorized the applicant to refer to their biological material and has consented to make it available to the public:
    • within a time limit of 16 months from the

      filing date or, where applicable, as from the priority date, the indications concerning the depositary authority and the accession number of the deposited biological material and where the biological material has been deposited by a third party;

    • within a period of 1 month after the EPO has notified the applicant of the right to inspect the file
  • this exclusion is provided for by R135(2) EPC;
• failure to comply with the time limit for filing a translation of the divisional application under R36(2) EPC;
  • if the divisional application is not filed in an official language, the applicant has a period of 2 months to file a translation thereof;
  • this exclusion is provided for by R135(2) EPC;
• failure to comply with the time limit for providing a certified copy and/or the translation of the earlier application in case of reference on filing under R40(3) EPC;
  • the applicant must provide such a copy and such a translation within a period of 2 months from the filing date;
  • this exclusion is provided for by R135(2) EPC;
• failure to comply with the time limit for payment related to annual fees under R51(2) EPC to R51(5) EPC;
  • the applicant may still pay an annual fee due belatedly, i.e. within a period of 6 months after its due date and with the payment of an additional fee (R51(2) EPC);
  • annual fees due on the date of filing of a divisional application may be paid without additional fee within a period of 4 months from such filing and with an additional fee within a period of 6 months (R51(3) EPC);
  • annual fees which fell due during a period benefiting from restitutio in integrum or a review (+ 4 months after this period) may be paid without additional fee for 4 months and with an additional fee within a period of 6 months from their due date (R51(4) a) EPC and R51(5) a) EPC);
  • annual fees which were due at the start of a period benefiting from restitutio in integrum or a review may be paid with an additional fee within a period of 6 months from the end of this period (R51(4) b) EPC and R51(5) b) EPC);
  • this exclusion is provided for by R135(2) EPC;
• failure to comply with the time limit for declaring or correcting a priority under R52(2) EPC or R52(3) EPC;
  • the applicant may add a priority within a period of 16 months from the earliest priority claimed;
  • the applicant may amend a priority within a period of 16 months from the earliest priority claimed or corrected (whichever is earlier) or 4 months from the filing date;
  • this exclusion is provided for by R135(2) EPC;
• failure to comply with the time limit for correcting certain irregularities in the application resulting in a change of the filing date (except concerning the certified copy of the earlier application) under R55 EPC;
  • the applicant must correct certain irregularities in the application within a period of 2 months from a notification;
  • this exclusion is provided for by R135(2) EPC;
• failure to comply with the time limit relating to missing parts under R56 EPC;
  • the applicant may add a part of the description which was omitted within a period of 2 months from the filing date or from a notification indicating that parts are missing;
  • if the filing date is changed following this addition, the EPO notifies the applicant of this change of filing date and the applicant has 1 month to ultimately abandon these added parts;
  • this exclusion is provided for by R135(2) EPC;
• failure to comply with the time limit for correcting certain formal irregularities in the application under R58 EPC
  • a 2-month time limit from a notification;
  • this exclusion is provided for in R135(2) EPC;
• failure to comply with the time limit for submitting the filing number or a copy of the priority under R59 EPC;
  • if the filing number of the application from which priority is claimed or a copy of that application has not been submitted within the time limits, the applicant is notified and must provide them within a set time limit;
  • this exclusion is provided for in R135(2) EPC;
• failure to comply with the time limit for selecting the claims to be searched under R62bis EPC;
  • if the EPO considers that there are several independent claims in the same category that are not linked by a single general inventive concept, it requests the applicant to indicate, within a time limit of 2 months, the claims on the basis of which the search is to be carried out;
  • this exclusion is provided for in R135(2) EPC;
• failure to comply with the time limit for identifying the subject-matter to be searched under R63 EPC;
  • if the EPO cannot carry out a meaningful search with respect to all or part of the claimed subject-matter, it invites the applicant to file, within a time limit of 2 months, a statement indicating the subject-matter to be searched;
  • this exclusion is provided for in R135(2) EPC;
• failure to comply with the time limit for requesting additional searches in case of lack of unity under R64 EPC;
  • if the EPO considers that the European patent application does not comply with the requirement of unity of invention, it invites the applicant to pay, within a time limit of 2 months, an additional search fee for each invention for which a search is to be carried out;
  • this exclusion is provided for in R135(2) EPC;
• failure to comply with the time limit for requesting a decision in case of notification of loss of rights under R112(2) EPC;
  • in case of notification of loss of rights, the party concerned may request a decision within a time limit of 2 months from that notification;
  • this exclusion is provided for in R135(2) EPC.
• failure to comply with the time limit for requesting a supplementary search report upon entry into the national phase under R164(1) EPC and R164(2) EPC;
  • in case of notification of lack of unity upon entry into the national phase and/or that the claimed subject-matter has not been searched, the applicant may pay additional search fees within a time limit of 2 months from that notification;
  • this exclusion is provided for in R135(2) EPC.

Jurisdiction

The competent body is the body that is competent to decide on the omitted act (R135(3) EPC).

Its decision is subject to appeal (unless it is issued by the Board of Appeal).