Further processing is the standard remedy whenever a deadline is missed during prosecution of a European patent application.
The requirements for an allowable request for further processing are:
- The request must relate to a failed time limit arising in the course of prosecution of a patent application before the EPO. Actions before national offices are not covered by further processing. Nor are time limits which arise in post grant procedures such as oppositions or limitation actions.
- The failure to act must give rise to a loss of rights
- The time limit must not be excluded from further processing (see list below)
- The further processing fee must be paid
- All the omitted acts must be completed (there may be multiple acts)
- The payment of the fee and the completion of the omitted acts must be carried out within two months of notification of the loss of rights (see example below)
Example:
Is there one fixed further processing fee?
No, there are three different types of further processing fees.
- If the omission relates to the non-payment of a fee, then the fee for further processing is a 50% uplift of that fee.
- If the omission does not relate to the payment of a fee, then a fixed fee, currently €265, is due.
- Finally, failure to file claims translations and deal with other formalities arising when the EPO issue a proposed text for grant is a special case, as despite the fact that fees are payable, no uplift of unpaid fees is payable, rather only a fixed fee is due.
Whilst the amount of the further processing fee is fixed by the EPC, the number of fees due can depend on the nature of the missed Communication. Applicants should therefore always check how many acts and fees are due.
Examples of some of the more common missed deadlines and the acts and fees which are due are set out below:
| Filing fee and additional page fees not paid |
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| Search fee not paid |
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| Failure to respond to search opinion and pay examination and designation fees |
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| Failure to request examination and pay examination fees |
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| Failure to entering regional phase before 31-month deadline |
Plus, if the PCT application was not published in English, French or German:
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| Failure to respond to examination report |
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| Failure to respond to the issuance of a proposed text for grant under Rule 71(3) EPC when no excess claims fees are due |
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| Failure to respond to the issuance of a proposed text for grant under Rule 71(3) EPC when excess claims fees are due |
Same as above plus:
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Is further processing available for all missed deadlines which occur during prosecution?
No. Although further processing is available to remedy most missed deadlines, some deadlines are excluded from further processing. In many cases this is because either the deadlines are administrative in nature (e.g. the deadlines for filing appeals or for requesting further processing themselves) or else because the EPC provides other remedies if those deadlines are missed.
Specifically, further processing is ruled out for the following:
- Loss of rights to priority due to failing to file a patent application before the end of the priority period or failure to file or correct a declaration of priority in good time
- Loss of rights to due to failure to file grounds of appeal or a notice of appeal or a petition for review
- Loss of rights due to a failure to file a request for further processing or a request for re-establishment of rights
- Failing to correct certain formalities when filing an application including:
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- Failing to provide a translation of an application which is not in English, French or German or failing to file a copy and translation of a previous application when an application is made through reference to an earlier application not in English, French or German.
- Failing to correct deficiencies to obtain a filing date, missing drawings and other formal matters when filing an application
- Failing to deposit biological material in support of an application in good time
- Failing to file a replacement application or request assumption of prosecution of an application following a court decision on entitlement
- Failing to pay a renewal fee with or without an uplift for late payment, including renewal fees due on filing a divisional application or which fall due following re-establishment of a lapsed application or a successful petition for review
- Failure to engage with the Search Division when issues arise when a search is to be carried out including:
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- Failing to identify independent claims to be searched or provide the EPO with a statement of subject matter to be searched when requested to do so by the EPO
- Failing to pay further search fees when the claims of an application are found to lack unity
Can the EPO reject a request for further processing?
Provided the requirements for further processing are met, the EPO will grant the request for further processing. However, if the requirements are not met, the EPO will reject the request.
If the EPO does reject a request for further processing, the legal consequence of not observing a time limit would take effect at the expiry of the normal due date (not the two-month period as mentioned above). This also applies when the further processing period has expired or has not been requested.
Example:
Does a written request for further processing have to be filed?
No, a formal written request for further processing is not required.
Examples:
- If an omitted act is the payment of a fee, paying the omitted fee and the further processing fee is sufficient.
- If an omitted act is a response for an EPO Communication (e.g. Examination Report), filing the omitted response and paying the further processing fee is sufficient. No formal request for further processing is required.
Can further processing be used on a missed post-grant deadline?
No, Article 121(1) EPC states that:
"if an applicant fails to observe a time limit...he may request further processing...".
The use of the term "applicant" restricts the use of further processing to prosecution proceedings relating to a pending application.
Further processing cannot be used for granted patents and opposition proceedings.
What date counts as the date of notification of loss of rights?
The date of notification of the loss of rights is the later of:
- The date when an applicant or their agent receives a letter from the EPO informing them of a loss of rights due to a failure to meet a deadline for action before the EPO; or
- 10 days from the date of that letter even if the letter is received earlier than that date.
Example:
If the EPO is shut on the day when the deadline for requesting further processing falls due (e.g. the deadline falls due on a weekend or a national holiday), then the deadline for response is extend to the next working day when the EPO is open.
Does a request for further processing appear on the EPO register?
Yes, the loss of rights and the request for further processing will appear on the EPO register.
Do third parties acquire any rights if they rely upon a European patent application lapsing due to failure to act and further processing occurs?
No. If an applicant completes the omitted act and pays the required fee for further processing by the appropriate deadline, the fact that the original deadline for response was missed has no legal effect whatsoever.
Is there a remedy for missing a further processing deadline?
Re-establishment of rights may be used to remedy a missed further processing deadline. However, unlike further processing in which a failure to act or pay a fee in good time is forgiven merely on payment of an extra fee, re-establishment of rights requires an applicant to demonstrate that the failure to act or pay a fee was despite all due care having been taken. Hence re-establishment of rights is only available in exceptional cases.
Can further processing be used for Euro-PCT applications?
Yes, further processing can be used if the deadline for entry of a PCT application into the regional phase is missed.
Example:
- 31-month regional phase deadline missed
- EPO issues a communication notifying the applicant of loss of rights due to failure to complete the formalities for entering the regional phase in good time
- Late entry into the regional phase can be effected by completing the formalities for entry the regional phase (e.g. formally requesting examination of the application, filing translations (if required) and paying fees due on filing) together with a payment of a further processing fee which will comprise a 50% uplift of all omitted fees and a fixed fee for each of the other omitted acts (e.g. a fee for failing to request examination plus another fee for failing to file a translation (if one was required)).
Further, once a PCT application has entered the regional phase it is treated the same as any other European patent application and, if a Euro-PCT application is refused or deemed as withdrawn following the non-observance of a time limit the applicant may request further processing.
Do's and Don'ts
Do's
- Check that the missed deadline is not excluded from further processing
- Check the application is pending, not granted
- Ensure the deadline for the deadline for requesting further processing is properly calculated
- Make sure further processing is requested in time
- Check how many fees are due
- Make sure there are sufficient funds available (e.g. EPO deposit account)
Don'ts
- Don't forget to complete all omitted acts
- Don't forget to pay the further processing fee(s)
- Don't request further processing for a national missed due date
- Don't forget that further processing cannot be used for a missed renewal fee
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
