Further processing

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Chapter 1. Conditions

In principle, it is possible to request a continuation of the procedure:

  • if there is a failure to observe a deadline during the issuing procedure (A121 (1) EPC, including the ex-parte appeal procedure relating to the grant procedure);
  • if the request for a continuation of proceedings is made in the 2 months from the notification indicating (i) failure to comply with the time limit or (ii) loss of rights (R135 (1) EPC). Of course, it is possible to submit this application before receiving any notification:
    • acts not completed must be completed within the same period accompanied by a late fee of 255 € (R135 (1) EPC and A2 (1) .12 RRT);
    • unpaid taxes must be paid within the same period, together with a late payment fee of 50% of the unpaid amount (R135 (1) EPC and A2 (1) .12 RRT);
  • if this continuation of the proceedings is presented by the applicant (ie the one registered in the REB via A127 EPC together R143 (1) (f) EPC, T656 / 98) or his authorized representative.

Chapter 2. Form and Tax

Section 2.1. Form

There is no particular form for this request (for example, it is not necessary to present it in writing).

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

Section 2.2. Tax

2.2.1. Principle

The fee for further processing isA2 (1) .12 RRT):

  • 50% of the tax if the late act is the payment of a tax;
  • 255 € in other cases.

Normally, it is a fee per deed: for example, if the acts of entry into European phase of a PCT request are missed (some requirements are listed in the R159 (1) EPC), prosecution fees can be very high.

In addition, in the case of a non-response to an ERP, you must pay most of the time:

2.2.2. Special tax for the actions of R71 (3) EPC

If the holder fails to take the necessary actions to respond to a R71 (3) EPC (supply of translation, payment of taxes, etc.), a single tax of 255 € is due for all these missed acts (A2 (1) .12 RRT).

Section 2.3. Acknowledgment request

It is possible to request the EPO to return an acknowledgment of receipt upon receipt of the payment of the prosecution fee (OJ 1979, 336, which actually applies to any document sent after filing with the EPO).

Chapter 3. Legal consequence

If the acts mentioned above are carried out, the legal consequences of non-compliance with the deadline are deemed never to have occurred (A121 (3) EPC).

Chapter 4. Case of loss of rights

In case of loss of rights, the EPO notifies the party according to the R112 EPC.

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

Chapter 5. Exceptions

There are, however, a few cases of non-compliance in which further processing is not possible (these periods benefit from restitutio in integrum A122 (1) EPCunless otherwise provided):

  • non-compliance priority period of the'A87 (1) EPC ;
    • an applicant normally has a waiting period of 12 months to file an application under priority of a previous application;
    • this exclusion is provided by A121 (4) EPC ;
    • this period still benefits from restitutio in integrum (A122 (1) EPC) a reduced period of 2 months (R136 (1) EPC).
  • non-compliance time limit for appeal of the'A108 EPC ;
    • an applicant normally has a period of 2 months from the service of a decision to appeal against it; In addition, a brief must be filed within 4 months from the service of the decision.
    • this exclusion is provided by A121 (4) EPC ;
  • non-compliance revision period of the'A112bis (4) EPC ;
    • an applicant normally has a period of 2 months from the service of a decision of a Board of Appeal to request a review of it;
    • this exclusion is provided by A121 (4) EPC ;
    • this period benefits from restitutio in integrum (A122 (1) EPC) a reduced period of 2 months (R136 (1) EPC).
  • non-compliance delay of proceedings of R135 (1) EPC ;
    • that's normal, otherwise the " snake would bit a little tail »...
    • this exclusion is provided by A121 (4) EPC ;
  • non-compliance time limit for restitutio in integrum of R136 (1) EPC ;
    • an applicant normally has a period of 2 months from the cessation of the impediment, but without exceeding 12 months from the expiry of the unobserved period;
    • it is normal, otherwise it would be possible to chain "pursuit" - "restitutio" - "pursuit" -etc. indefinitely;
    • this exclusion is provided by A121 (4) EPC ;
    • this period does not benefit from a restitutio in integrum nor a continuation of procedure;
  • non-compliance time to provide translation of the application of R6 (1) EPC ;
    • the applicant has a period of 2 months from the filing date to provide a translation of it if the description is not in an official language of the EPO;
    • this exclusion is provided for by R135 (2) EPC ;
  • non-compliance time to act when the application was made by an unauthorized person of R16 (1) (a) EPC ;
    • third party must act within a 3 months after the decision granting him the right to the patent has become res judicata;
    • this exclusion is provided for by R135 (2) EPC ;
  • non-compliance deadline for providing information in the context of a biological material repository of the R31 (2) EPC together R31 (1) (c) EPC and R31 (1) (d) EPC ;
    • a third party must provide proof that the third party has authorized the applicant to refer to his biological material and has consented to make it available to the public:
      • in a delay of 16 months from the filing date or, as the case may be, from the priority date, the particulars of the depositary authority and the serial number of the biological material deposited and where the biological material has been deposited by a third party ;
      • in a delay of 1 month after the EPO has notified the applicant of the right to consult the file
    • this exclusion is provided by R135 (2) EPC ;
  • non-compliance deadline for filing a translation of the divisional application of the R36 (2) EPC ;
    • if the divisional application is not filed in an official language, the applicant has 2 months to produce a translation of it;
    • this exclusion is provided by R135 (2) EPC ;
  • non-compliance time limit to provide a certified copy and / or translation of the previous application if returned at the time of filing of the R40 (3) EPC ;
    • the applicant must provide such a copy and such a translation within a 2 months from the deposit;
    • this exclusion is provided by R135 (2) EPC ;
  • non-compliance payment period in connection with the annual fees of R51 (2) EPC at R51 (5) EPC ;
    • the applicant can still pay an annual fee due late, ie within 6 months after its due date and with the payment of a surcharge (R51 (2) EPC);
    • the annual fees due on the date of the filing of a divisional application may be paid without surcharge within a period of 4 months from this deposit and with surcharge within a period of 6 months (R51 (3) EPC);
    • annual fees which have expired during a period benefiting from a restitutio in integrum or a revision (+ 4 months after this period) can be paid without surcharge during 4 months and with surcharge within a period of 6 months from their expiry (R51 (4) (a) EPC and R51 (5) (a) EPC);
    • the annual fees were due at the beginning of a period benefiting from a restitutio in integrum or a revision may be paid with surcharge within a period of 6 months counting the end of this period (R51 (4) (b) EPC and R51 (5) (b) EPC);
    • this exclusion is provided by R135 (2) EPC ;
  • non-compliance time to declare or correct a priority of R52 (2) EPC or R52 (3) EPC ;
    • the applicant can add a priority within a 16 months from the earliest priority that has been claimed;
    • the applicant can change a priority within a 16 months from the earliest priority that has been claimed or corrected (min of 2) or 4 months from the deposit;
    • this exclusion is provided by R135 (2) EPC ;
  • non-compliance time to correct certain irregularities in the application resulting in a change in the filing date (except for the certified copy of the earlier application) of R55 EPC ;
    • the applicant must correct certain irregularities in the application within a 2 months from a notification;
    • this exclusion is provided by R135 (2) EPC ;
  • non-compliance deadline for missing parts of R56 EPC ;
    • the applicant can add a part of the description which has been forgotten within a 2 months from the filing date or upon notification that there are missing parts;
    • if the filing date is changed as a result of this addition, the EPO notifies the applicant of this change of filing date and the filing date has been changed. 1 month to finally abandon these added parts;
    • this exclusion is provided by R135 (2) EPC ;
  • non-compliance deadline to correct certain irregularities in the form of the request of R58 EPC ;
    • the applicant must correct certain irregularities in the application within a 2 months from a notification;
    • this exclusion is provided by R135 (2) EPC ;
  • non-compliance time to produce the filing number or the copy of the priority of R59 EPC ;
    • if the filing number of the application whose priority is claimed or the copy of the application has not been filed in time, the applicant is notified and must provide it in a deadline ;
    • this exclusion is provided by R135 (2) EPC ;
  • non-compliance time to select the claims to be searched of R62bis EPC ;
    • if the EPO considers that several independent claims of the same category which are not bound by the same common inventive concept, it asks the applicant to indicate, within a 2 monthsthe claims on the basis of which the search is to be made;
    • this exclusion is provided by R135 (2) EPC ;
  • non-compliance time to identify the items to be searched of R63 EPC ;
    • if the EPO can not conduct a meaningful search for all or part of the claimed subject matter, it invites the applicant to file, within a 2 monthsa statement indicating the elements to be researched;
    • this exclusion is provided by R135 (2) EPC ;
  • non-compliance delay to request additional research in case of non-unity of R64 EPC ;
    • if the EPO considers that the European patent application does not meet the requirement of unity of invention, it invites the applicant to pay, within a 2 monthsa new search fee for each invention for which a search must be made;
    • this exclusion is provided by R135 (2) EPC ;
  • non-compliance deadline for requesting a decision in case of notification of loss of rights of R112 (2) EPC ;
    • in the event of notification of loss of rights, the interested party may request a decision within a 2 months from this notification;
    • this exclusion is provided by R135 (2) EPC.
  • non-compliance time to request a complementary search report upon entry into phase of the R164 (1) EPC and R164 (2) EPC ;
    • in the case of a notification of non-unity at the entry into phase and / or the fact that the object claimed has not been sought, the applicant may pay additional search fees within a period of 2 months from this notification;
    • this exclusion is provided by R135 (2) EPC.

Chapter 6. Competence

The competent body is the body which is competent to rule on the act not completed (R135 (3) EPC).

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

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