Further processing

Further processing is the mechanism that allows an applicant for a European patent to remedy a failure to observe a time limit before the European Patent Office (EPO), without having to justify the cause of the delay. It is provided for by Article 121 of the European Patent Convention (EPC) and Rule 135 of its Implementing Regulations. It is the standard remedy against loss of the application, re-establishment of rights being available only on a subsidiary basis.

Conditions for further processing

The request is made by paying the prescribed fee within two months of the communication noting the failure to observe the time limit or the loss of rights. The omitted act must be completed within the same period. No justification is required, and the EPO grants the request once these conditions are met. The amount of the fee depends on the nature of the omitted act: where the omission concerns payment of a fee, the further processing fee is calculated as a proportion of that fee.

Scope of further processing

Further processing covers most time limits in the grant procedure, whether laid down by the Convention or set by the Office, such as the time limits for replying to the examiner’s communications, the time limit for filing the request for examination or that of the communication under Rule 71(3). It is, however, excluded for a series of time limits listed in the Convention and its Implementing Regulations, in particular the priority period, the time limit for appeal, the time limits for paying renewal fees, which benefit from their own grace period, and the time limit for requesting re-establishment. These excluded time limits can only be remedied through re-establishment of rights, where available.

Comparable mechanisms

French law has a similar mechanism before INPI, which allows proceedings to continue after failure to observe a time limit set by the office, on a request filed within a short period. The EU trade mark regulation also provides for continuation of proceedings before the EUIPO. In all cases, the mechanism presupposes proceedings still pending before the office, and it can no longer be used once the short period following notification of the loss of rights has expired.

Key points

Further processing is the first reflex when a time limit before the EPO has been missed, since it requires no justification and does not depend on any assessment by the Office. It must be requested within two months of the communication of loss of rights, by completing the omitted act and paying the fee. It should first be checked that the time limit concerned is not excluded, failing which only re-establishment of rights, which is more demanding, remains possible.

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This glossary entry is general in scope and does not constitute legal advice.

Dhenne Avocats litigates patent disputes before the Paris Judicial Court, the Paris Court of Appeal and the Unified Patent Court. Where the question arises in a real case, the useful moment is almost always before proceedings are issued.

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