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 of (i) failure to observe the deadline or (ii) loss of rights (R135 (1) EPC). Of course, it is possible to submit this application before receiving any notification:
    • acts not performed must be performed within the same period accompanied by a late payment fee 255 € (R135 (1) EPC and A2 (1) .12 RRT);
    • unpaid fees must be paid within the same period, accompanied by a late 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 specific form for this request (for example, there is no need to submit 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, this is a fee per missed act: for example, if the acts for entering the European phase of a PCT application are missed (certain 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 EPP, you must pay most of the time:

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

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

If the holder does not perform the actions necessary 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. Request for acknowledgment of receipt

It is possible to ask the EPO to return an acknowledgment of receipt upon receipt of payment of the prosecution fee (OJ 1979, 336, which in reality 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 the event of loss of rights, the EPO notifies the party according to the R112 EPC.

It is often useful to request 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 further processing will be reimbursed, since it has been paid without cause.

Chapter 5. Exceptions

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

  • non-compliance with priority period of the'A87 (1) EPC ;
    • an applicant normally has a period of 12 months to file an application under priority of an earlier application;
    • this exclusion is provided by A121 (4) EPC ;
    • this deadline nevertheless benefits from a restitutio in integrum (A122 (1) EPC) a reduced period of 2 months (R136 (1) EPC).
  • non-compliance with 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 factum must be filed within 4 months from the service of the decision.
    • this exclusion is provided by A121 (4) EPC ;
  • non-compliance with 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 thereof;
    • this exclusion is provided by A121 (4) EPC ;
    • this period benefits from a restitutio in integrum (A122 (1) EPC) a reduced period of 2 months (R136 (1) EPC).
  • non-compliance with delay of proceedings of R135 (1) EPC ;
    • this is normal, otherwise the “snake would bit a little tail"...
    • this exclusion is provided by A121 (4) EPC ;
  • non-compliance with 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 expiration of the time not observed;
    • this 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 or from further processing;
  • non-compliance with time to provide translation of the application of R6 (1) EPC ;
    • the applicant has a period of 2 months from the date of filing to provide a translation thereof if the description is not in an official language of the EPO;
    • this exclusion is provided for by R135 (2) EPC ;
  • non-compliance with 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 with deadline for providing information in the context of a deposit of biological material 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, where applicable, from the priority date, indications concerning the filing authority and the serial number of the biological material deposited and when 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 with 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 a period of 2 months to produce a translation of it;
    • this exclusion is provided by R135 (2) EPC ;
  • non-compliance with 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 with 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 expiry and with the payment of a surcharge (R51 (2) EPC);
    • annual fees due on the date of filing of a divisional application may be paid without surcharge within 4 months from this deposit and with surcharge within a period of 6 months (R51 (3) EPC);
    • the 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 start of a period benefiting from a restitutio in integrum or a revision can be paid with a surcharge within 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 with 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 with 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 with 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 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 in filing date and the latter has 1 month to finally abandon these added parts;
    • this exclusion is provided by R135 (2) EPC ;
  • non-compliance with 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 with time to produce the filing number or the copy of the priority of R59 EPC ;
    • if the filing number of the application for which priority is claimed or the copy of this application has not been produced within the time limit, the applicant will be notified and must supply them within one deadline ;
    • this exclusion is provided by R135 (2) EPC ;
  • non-compliance with deadline for selecting claims to be researched of R62bis EPC ;
    • if the EPO considers that several independent claims of the same category which are not linked by the same common inventive concept, it requests the applicant to indicate, within a period of 2 monthsthe claims on the basis of which the search is to be made;
    • this exclusion is provided by R135 (2) EPC ;
  • non-compliance with deadline for identifying the elements to be researched of R63 EPC ;
    • if the EPO cannot carry out a significant search with regard to all or part of the object claimed, it invites the applicant to file, within a period of 2 months, a statement of the items to be researched;
    • this exclusion is provided by R135 (2) EPC ;
  • non-compliance with 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 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 with 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 with deadline for requesting an additional search report when entering the phase of the R164 (1) EPC and R164 (2) EPC ;
    • in the event of notification of non-unity upon entry into phase and / or the fact that the claimed object 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 accomplished (R135 (3) EPC).

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

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