General

In patent applications, the scope of protection must be structured properly, and the process must be managed meticulously. In the patent application procedure, failure to comply with certain time limits may result in the application being deemed withdrawn, which may lead to a loss of rights. The EPO provides mechanisms in certain circumstances that allow such loss of rights to be remedied. One of the most common and practical of these is the “further processing” mechanism. In this article, we will address the concept of further processing and the situations in which it may be applied.

Further processing is a legal remedy that can be requested before the EPO in order to revive a patent application when a certain time limit has been missed. This mechanism enables the revival of the application process by paying the official fees required for further process and completing any omitted acts, if applicable. If the payments and procedural acts required for further processing are completed within the time limit specified in the EPO notification of loss of rights, the application shall proceed from where it was interrupted. In addition, although this mechanism aims to prevent loss of rights, in practice it may also be used as a tool that provides applicants with additional time in certain situations. However, it should not be forgotten that the further processing mechanism is not applicable to all acts that are subject to a time limit.

In EPO practice, further processing is available for many acts subject to time limits. The most common situations include failure to pay the filing and search fees, failure to file observations in response to the extended European search report, failure to pay the designation fees and examination fees, failure to reply to an examination communication within the prescribed time limit, and failure to comply with the 31-month time limit in applications filed under the Patent Cooperation Treaty (“PCT”).

A request for further processing must be filed no later than two months from the date of notification of the communication of loss of rights issued by the EPO. When filing the request, the further processing fees must be paid, and any omitted procedural acts, if applicable, must be completed. These fees are calculated by taking into account which act was omitted in the application and which fee was not paid. If the deficiency arises from non-payment of a fee, the further processing fee shall be applied as 50% of the relevant fee. On the other hand, if the deficiency does not arise from non-payment of an official fee, in other words where a procedural act has been omitted, the flat further processing fee determined by the EPO must be paid. However, it should be noted that depending on the number of omitted acts, the number of further processing fees to be paid may also increase.

For example, in the case of missing the 31-month deadline in a PCT application (if there is a priority claim; calculated from the priority date), the fees to be paid are as follows:

• Filing fee with 50% surcharge
• Search fee with 50% surcharge
• Designation fee with 50% surcharge
• Examination request fee with 50% surcharge
• A flat further processing fee for request of examination as an omitted act
• If applicable, total additional page fee with 50% surcharge

These fees are mandatory official fees required for initiating or continuing the proceedings, and by paying them within the prescribed period and completing any omitted procedural acts, the application shall be deemed valid and the proceedings shall continue.

In practice, further processing is frequently confused with re-establishment of rights. However, these two mechanisms are regulated separately under the European Patent Convention (“EPC”) and are clearly distinguished in terms of their conditions of application.  Further processing does not require proof of fault or due care, whereas re-establishment of rights obliges the applicant to demonstrate that, despite having exercised all due care, the time limit was missed. Correctly distinguishing between these mechanisms is important in determining which legal remedy may be applicable in a given case. In this context, the further processing mechanism before the EPO serves as an important procedural safeguard for applications. Therefore, although missing a time limit does not necessarily result in the complete loss of rights in the application, this mechanism must be used with due care and in strict compliance with procedural requirements.