A guide to ‘further processing’ at the European Patent Office
When your European patent attorney mentions ‘further processing’, they are referring to a legal remedy available at the EPO that allows applicants to restore pendency of a patent application in the case of certain missed deadlines. While the primary purpose of this remedy is to provide applicants with a safety net against loss of rights, it can also be used to gain extra time during prosecution.
Indeed, achieving quick allowance is not always the goal. Applicants may wish to delay prosecution as part of a broader strategy, for example, to ensure that any potential claim amendments are aligned with recent market developments, competitor activity or even prosecution in other jurisdictions. Similarly, applicants may require more time to formulate a comprehensive response to a complex examination report and/or to generate supplementary experimental data to support inventive step arguments.
In such situations, further processing may offer a strategic tool for gaining additional time during prosecution before the EPO.
The official fees referenced below are those applicable at the time of writing this article.
Further processing – the basics
The widely-used term ‘further processing’ stems from the wording of Article 121(1) EPC, according to which “[i]f 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”.
If a prosecution deadline has been missed (and the deadline is not excluded from further processing – more on this below), the EPO will send a communication notifying the applicant of loss of rights. This typically happens within 2-4 weeks of the missed deadline.
The communication sets a non-extendable two-month period for requesting further processing. That said, the request can be made immediately after the deadline has been missed, before the issue of the official communication.
To make a request for further processing, it is necessary to (i) complete the ‘omitted act’, i.e. (the action(s) that should have been performed by the original deadline); and (ii) pay a specific fee, the amount of which depends on what the ‘omitted act(s)’ is/are.
In general, for a procedural act such as failure to reply to an examination report, a flat fee for further processing (300 EUR) is payable; but if further processing is to be requested because an official fee has not been timely paid, then the further processing fee amounts to 50% of the missed fee. A number of scenarios showing different omitted acts and corresponding fees payable are discussed later in the article.
Missing the deadline for requesting further processing is very likely to be a catastrophic error – if this happens, the only way forward is to file a request for re-establishment of rights, and those are very rarely successful.
Further processing is often used in the context of responding to an examination report (i.e. a communication under Article 94(3) EPC). When used in conjunction with an extension of time, further processing can extend the period for replying to the examination report to a total of about 8.5 months, as follows:
8.5 months = 4 months (initial deadline) + 2 months (extension of time) + ‘0.5’ months (for the EPO to dispatch the loss of rights communication) + 2 months (period for requesting further processing)
A valid request for further processing in this instance requires (a) filing a response addressing the objections raised in the examination report (thus completing the ‘omitted act’) and (b) paying the (flat) further processing fee of 300 EUR.
Of course, further processing can be used in many other contexts, e.g. entering the EPO regional phase, filing a response to a communication under Rule 71(3) EPC (‘notice of intention to grant’) or paying the designation fee after filing.
It is good practice to file requests for further processing a few days before the deadline to minimise the risk of error under time pressure and to ensure timely receipt by the EPO.
Excluded time limits
Further processing is not available in respect of all missed deadlines – certain time limits are explicitly excluded by the EPC rules. Some of those deadlines do not affect the pendency of an application (e.g. non-payment of further search fees). In addition, in the broader sense, there is perhaps the need for a balance between (i) how easy it is for an applicant to reverse loss of rights and (ii) providing legal certainty to the public.
Thus, requesting further processing is excluded for several procedural steps, including a few important ones, such as:
(a) filing a notice of appeal;
(b) filing a European patent application within the 12-month period for claiming priority from an earlier application;
(c) making a declaration of priority within 16 months of filing an earlier application; or
(d) filing claims, if not provided on filing of an application.
Further processing is also excluded for the normal period for paying renewal fees at the EPO (as a six-month grace period is available) and indeed for the grace period itself (as re-establishment of rights comes into play).
Note that requesting further processing is not applicable to the deadline for paying extension and/or validation fees – there is a grace period available and, in any case, if those fees are not timely paid, the application itself remains pending before the EPO.
Finally, as noted above, missing the deadline for requesting further processing necessitates the filing of a request for re-establishment of rights - one cannot request ‘further’ further processing in such cases.
Examples
Below are several scenarios illustrating how to request further processing in specific situations. In some cases, careful consideration is needed to ensure the request is valid.
Scenario I
The first case is relevant to ex-PCT applications that were not searched by the EPO during the international phase - a reply to the communication under Rules 70(2) and 70a(2) EPC, inviting the applicant to address the objections raised in the extended European search report and to confirm that they wish to proceed with the application.
If no reply is received, a loss of rights communication will issue. In this instance, a valid request for further processing necessitates payment of two flat further processing fees – one for replying to the objections and another for confirming the wish to proceed with the application, as there are treated as separate acts. Paying a single flat fee will, in such a situation, lead to abandonment of the application.
Thus, if further processing is to be used in that instance, it may be safer and more cost-effective to have the EPO representative file a quick (and timely) submission at the EPO along the lines of “We wish to proceed with this application. A reply to the objections raised in the search opinion will follow in due course”. Then, only one further processing fee is due when requesting further processing.
Scenario II
Secondly, to demonstrate the complexity of making a further processing request and its impact on costs, let’s consider the procedure for entering the EPO regional phase after the 31-month deadline. For this exercise, let’s assume that the specification is in English and consists of 300 pages, the USPTO acted as the ISA, and the 3rd year renewal fee is not yet due.
In most cases, a (timely) entry would occur a few weeks/days before the 31-month deadline. Thus, the following needs to be done on entry:
I) the online filing fee must be paid (135 EUR);
IA) the fee for excess pages must be paid (270 x 17 EUR = 4590 EUR);
II) the designation fee must be paid (685 EUR);
III) examination must be requested;
IIIA) the examination fee must be paid (1915 EUR); and
IV) the search fee must be paid (1520 EUR)
This gives us 8845 EUR in official fees.
Having the above figures in mind, let’s now assume that we are entering the same application into the EPO regional phase late, after the 31-month deadline, by requesting further processing. To do so, we need to:
I) pay the online filing fee + 50% of that fee (202.5 EUR);
IA) pay the fee for excess pages + 50% of that fee (6885 EUR);
II) pay the designation fee + 50% of that fee (1027.5 EUR);
III) request examination and pay one flat further processing fee for the ‘omitted act’ (300 EUR);
IIIA) pay the examination fee + 50% of that fee (2872.5 EUR); and
IV) pay the search fee + 50% of that fee (2280 EUR)
Starting from 8845 EUR, we have thus arrived at 13567.5 EUR. As can be seen, extra time can sometimes be relatively costly. The effect is, of course, compounded for longer specifications.
Scenario III
Replying to a communication under Rule 71(3) EPC is an interesting exception in the context of requesting further processing.
The EPO’s rules relating to fees specifically prescribe that a single flat further processing fee is payable in connection with (a) payment of the fee for grant and publishing (1080 EUR); and (b) filing a translation of the claims into other two official languages of the EPO.
Thus, omitting either or both actions would only necessitate payment of a flat fee of 300 EUR to request further processing; there is no need to pay 50% extra when the fee for grant and publishing is not timely paid.
Scenario IV
In the last scenario, let’s look at the use of further processing in the more traditional sense, i.e. to remedy accidental loss of rights.
A response to a Rule 161(1) /162 EPC communication is due (the EPO acted as the ISA during the international phase).
There are 60 claims on file. The applicant wishes to file a response to the objections raised by the EPO and to proceed with 19 claims.
The EPO representative timely files the response, together with a claim set containing 19 claims. However, they forget (!) to pay 4 excess claim fees (275 x 4 = 1100 EUR) due in respect of claims 16 to 19.
The EPO will issue a loss of rights communication indicating that claims 16 to 19 are deemed to be abandoned. To pursue those claims, it is necessary, in respect of each of claims 16 to 19, to pay the excess claim fee and 50% of that fee. Thus, a valid request for further processing would necessitate the payment of 1650 EUR in this instance.
Summary
Further processing at the EPO allows applicants to restore pendency of a lapsed application in the case of certain missed deadlines, and can also be used strategically to extend prosecution timelines. However, care must be taken to understand which time limits are eligible and what actions and fees are required to ensure a valid request is filed.
If you have any questions on EPO prosecution strategy, feel free to get in touch.
This article is for general information only and is not intended to constitute legal advice. If you would like tailored advice on a specific matter, please do not hesitate to contact me.
