The Do’s and Don’ts of Further Processing

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:

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:

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:
  • 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:
  • 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