When is further processing at the EPO not available?
Much of the administrative burden around managing portfolios of patent applications is concerned with ensuring that record systems and filing is up-to-date, and deadlines are met. These deadlines are often set by time limits which are written into patent law and in many cases, the consequence of missing a deadline is the patent application lapsing.
Unfortunately, even with effective monitoring systems in place, deadlines are sometimes missed and patent applications lapse – a potential disaster if the patent application covers an important product. Many patent offices provide systems for recovering the patent application when a lapse was not intended. The European Patent Office (EPO) provides two such remedies: further processing and restoration. However, it’s important to be aware that these remedies are not available in all situations.
In this article, we focus on further processing at the EPO, and specifically, the situations in which further processing cannot be used.
Article 121 EPC sets out the law surrounding further processing. It states:
“(1) If an applicant fails to observe a time limit vis-à-vis the European Patent Office, he may request further processing of the European Patent Application.
(2) The European Patent Office shall grant the request, provided that requirements laid down in the Implementing Regulations are met. Otherwise, it shall reject the request.
(3) If the request is granted, the legal consequences of the failure to observe the time limit shall be deemed not to have ensued.
(4) Further processing shall be ruled out in respect of the time limits in Article 87(1) [EPC], Article 108 [EPC] and Article 112a, paragraph 4 [EPC] as well as the time limits for requesting further processing or re-establishment of rights. The Implementing Regulations may rule out further processing for other time limits.”
That is to say, provided some requirements are met, the consequences of a failure to meet a time limit can be reversed if further processing is requested. The requirements are (essentially) that the omitted act is completed, a fee is paid and further processing is formally requested.
Excluded time limits
Paragraph four of Article 121 EPC explicitly states that some time limits are excluded. These include the:
- 12 month deadline for filing a European patent application claiming priority from a first application
- deadline for filing a notice of appeal
- deadline for filing a statement of appeal
- deadline for filing a petition for review
- time limit for requesting further processing
- time limit for filing an application to restore a lapsed patent application
- deadline for filing a translation of an application which is not filed in French, German or English (including divisional applications not filed in French, German or English)
- deadline for filing a replacement patent application or taking over prosecution of a current patent application following entitlement proceedings
- time limit for depositing biological material
- deadline for filing a certified copy
- deadline for paying renewal fees (and the deadline for late payment of renewal fees)
- deadline for adding or correcting a declaration of priority
- deadline for correcting formal deficiencies and for filing formal drawings
- deadline for selecting claims to be searched
- deadline for clarifying subject matter to be searched
- time limit for requesting extra searches
- deadline for requesting a decision based on the file following a notification of loss of rights.
These time limits are explicitly defined by the statute. However, there are some other situations in which further processing is not available. These situations are more nuanced.
Post-grant and appeal proceedings
It’s not possible to rely on further processing in post-grant proceedings or in appeal proceedings at the EPO. Article 121 is explicitly limited to “an applicant” and can therefore only be used while the patent application is pending.
Therefore, failure to miss the deadline for filing an opposition to a patent, for example, cannot be remedied by further processing, and neither can the deadline for payment of the opposition fee.
One of the key requirements for filing a divisional application is that the parent application, from which the divisional application is derived, is pending. Therefore, it’s established that the deadline for filing a divisional application is the day before the parent application is formally granted.
However, it was recently confirmed (J 10/12) that this is not a time limit as such, and therefore further processing does not apply. That is to say, if an applicant wants to file a divisional application, they must file it before the day the parent application grants as a European patent, or the option for doing so is lost.
Missing a deadline at the EPO is never a good thing but further processing can often provide a simple, effective remedy for correcting the mistake. However, there are numerous situations when it will not work.
Maintaining an effective record system is a useful (and relatively simple) way of mitigating against the risk of missing a deadline where further processing will not rescue you from the consequences. If you’re an organisation with many patent rights, it’s advisable to implement a formal record system which enables you to monitor deadlines. This means that they won’t pass by without action. If implementing such a record system is not commercially practical or desirable, it’s recommended to use the services of a firm of patent attorneys to monitor your records, allowing you to focus on the broader issues.