If the European patent application is to be refused or is refused or deemed to be withdrawn following failure to reply within a time limit vis-à-vis the EPO, the application is allowed to proceed if the applicant makes a request for further processing of the application within two months of the communication concerning either the failure to observe a time limit or a loss of rights. Further processing must be requested by payment of the prescribed fee. The omitted act must be completed within the period for making the request. The request is not deemed to have been filed until the respective fee for further processing has been paid. If the fee for further processing has been paid in due time but the omitted act has not been completed within the period for making the request, the request is inadmissible.[Art. 121(1); Art. 121(2); Rule 135(1); Rule 135(3); Art. 2(1), item 12, RFees; ]
If several acts have the same legal basis, they form a unitary procedural act and are subject to a unitary time limit (see J 26/95). Further processing in respect of such a time limit is subject to the payment of a single fee for further processing. The amount of the single fee depends on the number and character of the omitted acts forming the unitary procedural act.
The following examples serve to illustrate this:
An exception to the above principle concerns Rule 71(3):
Actions not forming a unitary procedural act are subject to time limits expiring independently of one another, each resulting in the application being deemed withdrawn. If such time limits expire on the same date, the missing of each independent time limit results in the application being deemed withdrawn (see J 26/95). This applies regardless of whether the applicant is informed of the non-performance of procedural acts in one communication or in several communications. In such cases, a fee for further processing is due in respect of each unobserved time limit. For an example, see E‑VIII, 3.1.3.
A request for further processing may also be filed between expiry of the unobserved time limit and notification of the communication concerning either the failure to observe a time limit or a loss of rights.
The department competent to decide on the omitted act also decides on the request for further processing.
Where the omitted act is a substantive response (e.g. to the extended European search report or to a communication under Art. 94(3)), a mere procedural request (e.g. a request for oral proceedings) does not qualify as completion of the omitted act and therefore cannot lead to further processing being granted (see B‑XI, 8, and C-IV, 3).
As a general rule, further processing is the legal remedy for failure to observe a time limit during proceedings before grant, even where the consequence is a partial loss of rights (e.g. loss of priority right). However, the possibility of requesting further processing is ruled out for the periods referred to in Art. 121(4) and Rules 6(1), Rule 16(1)(a), Rule 31(2), Rule 36(2), Rule 40(3), Rule 51(2) to Rule 51(5), Rule 52(2) and Rule 52(3), Rule 55, Rule 56, Rule 58, Rule 59, Rule 62a, Rule 63, Rule 64, Rule 112(2) and Rule 164(1) and Rule 164(2).[Rule 135(2); ]
Date retrieved: 17 May 2021
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EPC Implementing Rules
EPC Rules relating to Fees
EPO Guidelines - A Formalities Examination
EPO Guidelines - B Search
EPO Guidelines - C Procedureal Aspects of Substantive Examination
EPO Guidelines - E General Procedural Matters
XGL E VIII – Time limits, loss of rights, further and accelerated processing and re-establishment of rights