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, though the EPO does offer mechanisms to extend or recover from some, but not all, missed deadlines.
One such mechanism was the EPO’s long-standing 10-day postal rule, though this was abolished and stopped being enforceable for any communications issued on or after the 1st of November 2023. In practice this means we have lost over a week’s worth of time to respond to office actions, such as examination reports and the like. 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 their representative may request an extension of a time limit under Rule 132 EPC. This type of request can be used to extend deadlines that are specified by the EPO, such as those associated with examination reports issued during prosecution of an application. The request must be made in writing and filed before the original deadline expires. Requests are usually granted without providing evidence, provided the extension is not more than two months and the total time period for responding to a communication does not exceed six months. Unlike many territories, such as the US and Japan, the EPO does not charge for this.
Sufficient reasons would usually need to be provided to secure a time extension of longer than two months, especially if the total time period were to exceed six 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 extension 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 under Rule 132 EPC, which must be paid within six months of the date in 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 their 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 which does not involve the payment of a fee, there will be a fixed charge. At the present time, this fee is EUR 300. This mechanism applies to a broad range of deadlines, generally including those for responding to office actions, paying fees, and submitting required documents.
However, it is important to note that requesting further processing is not always possible. Article 121(4) EPC and Rule 135(2) EPC outline a list of time limits which are excluded, including the 12 month deadline for filing an application claiming priority from a first patent application, filing the translation of an application not filed in an official language of the EPO and the deadline to request further processing itself. Missing these deadlines would lead to a loss of rights, which can only be remedied, potentially, 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 the missed deadline was missed despite all due care being taken. Generally speaking, 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 the difficult ‘all due care’ standard means that applications should be meticulously prepared.
Re-establishment of rights is available for certain critical deadlines, such as the deadline for paying renewal fees.
Renewals and Validations
Renewal payments are due at the EPO annually from the 3rd 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, though some national offices allow the deadline to be extended in certain circumstances.
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.
