Navigating the patent application process at the European Patent Office (EPO) involves adhering to numerous time limits. Missing these deadlines can incur unexpected extra costs or risk jeopardising an application or granted patent, but the EPO offers mechanisms to extend or recover from missed deadlines.

One such mechanism was the EPO’s longstanding 10-day postal rule, however this was abolished a little over a year ago and stopped being enforceable for any Communications issued on or after the 1^st of November 2023. In practice this means we have lost over a week’s worth of time to respond to official actions. Maintaining the balance between preparing a well thought out response and adhering to the EPO’s time limits can be challenging, therefore now is a good time to explore the remaining ways in which it is possible to gain an extension of time at the EPO.

Extension of time requests

An applicant or representative may request an extension of a time limit under Rule 132 EPC.  The request must be made in writing and filed before the time limit has expired. Requests are usually granted without providing evidence, provided the extension is not more than two months and the total time period does not exceed six months. During prosecution this is commonly used when responding to deadlines set out in communications requesting a response to search or examination reports. Unlike many territories, such as the US and Japan, the EPO does not charge for this.

Sufficient reasons would usually need to be provided in order to secure a time extension of longer than 2-months, especially if the total time period were to exceed 6-months. Unforeseeable or exceptional circumstances such as serious illness or the need to carry out extensive biological testing could constitute sufficient evidence. In practice, the EPO are very strict in their consideration of requests for discretionary extensions of time.

It should be noted that this is not possible where the EPC specifies that a deadline is fixed and not extendable. For instance, it is not possible to extend the deadline to pay examination and designation fees, which must be paid within six months of the date on which the European Patent Bulletin mentions the publication of the European search report.

Further Processing

Further processing is a safeguard provided by the EPO under Article 121 EPC. It allows applicants to respond to certain missed deadlines by completing the required action within an additional time period. When a deadline is missed, the applicant or representative can request further processing by filing a request and paying the prescribed fee within two months from the notification of the missed deadline. In practice, it usually takes the EPO a few weeks to issue this notification, and so further processing ‘buys’ an effective extension of a  little more than two months.

The fee for further processing depends on the type of missed action. If the missed action involves payment of a fee, the further processing fee is 50% of the missed fee. Of course, this can often be a very significant amount of money. For other missed actions, such as responding to a communication from the EPO, there will be a fixed charge. At the present time, this fee is EUR 300. This mechanism applies to a broad range of deadlines, including those for responding to office actions, paying fees, and submitting required documents. However, it is important to note that further processing is not available for all time limits. Deadlines such as filing the application, claiming priority, and requesting substantive examination are not eligible for further processing. In these cases, missing the deadline would lead to a loss of rights. This can only be remedied by requesting a re-establishment of rights.

Re-establishment of Rights

For deadlines that cannot be extended through further processing, re-establishment of rights under Article 122 EPC provides a possible means of redress, provided that deadline is missed despite all due care being taken. A request for re-establishment of rights must be filed within two months of the removal of the cause of non-compliance, and no later than one year from the original missed deadline.

The request must contain a statement explaining the circumstances that led to the missed deadline and provide evidence that all due care was taken. Additionally, the omitted action must be completed, and the corresponding fee paid within this two-month period. The ‘all due care’ criterion sets a high bar. Applicants should be aware that there is no guarantee that a re-establishment of rights application will be successful. Also, the cost is generally high, because of the difficult ‘all due care’ standard means that applications should be meticulously prepared.  

Re-establishment of rights is available for certain critical deadlines, including filing the request for examination, paying renewal fees, and submitting translations after the grant of the patent.

Renewals and Validations

Renewal payments are due at the EPO annually from the 3^rd patent year up until the patent has granted. If the deadline is missed, there is a 6-month grace period in which the renewal fee can still be paid. A late fee must also be paid if using the grace period. This fee varies depending on the year of the renewal.

The EPO offers no means to extend the 3-month deadline in which to complete national validations. However national offices may allow the deadline to be extended, for instance by requesting an extension of time or filing a request for further processing.

Conclusions

There are various ways of obtaining extra time to complete actions before the EPO, some more desirable than others. Our brief summary is presented above. For more information, please contact the authors.