Missed a Patent Deadline? European Patent Law Provides Various Remedies

If an applicant fails to meet a deadline set by the European Patent Office (EPO) during patent prosecution, the European Patent Convention provides three possible legal remedies. The remedy that is available depends on the specific action missed.

Further processing

Further processing is a common and frequently used remedy available at the EPO for patent applications where the application is to be refused or deemed to be withdrawn following the applicant's failure to reply within a time limit set by the EPO. This usually occurs when the applicant fails to respond to a written invitation issued by the EPO.

In such cases, the EPO issues a written notification of the loss of rights. Further processing must be requested within two months of the written notification by:

• paying the further processing fee; and

• completing the omitted action.

Re-establishment of rights

Re-establishment of rights, also known as "restoration" or "reinstatement", is available at the EPO for both patent applications and granted patents where the applicant or proprietor, despite taking all due care required by the circumstances, was unable to observe a time limit set by the EPO.

A request for re-establishment must be filed in writing within two months from the removal of the cause of non-compliance with the time limit, but at the latest within one year of expiry of the unobserved time limit. The omitted action must be completed within this period and a requisite fee must be paid.

The EPO applies a strict "all due care" criterion to determine the eligibility of the request for re-establishment. It is up to the applicant or proprietor to provide, together with the request, the grounds on which the request is based and to set out the facts on which it relies in order to prove that all due care was taken.

Re-establishment of rights is also available in various countries (including Belgium, the Netherlands, France, Germany and the United Kingdom) However, the eligibility criterion may be different since some countries apply a less strict "unintentional" criterion, whereby the applicant or proprietor only has to show that its non-compliance with the time limit was unintentional.

Renewal fee

A third remedy relates to renewal fees and is available where the renewal fee was not paid on a timely basis. In such cases, the renewal fee may be validly filed within six months by paying the renewal fee together with a 50% increase. This remedy exists both at the EPO for European patent applications and in various countries (including Belgium, the Netherlands, France, Germany and the United Kingdom) for national patent applications, national patents and European granted patents validated in those countries.

Source: lexology.com-MICHAEL MOREELS

Editor: IPR Daily-Selly