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Late Entry Into European Regional Phase

The deadline for requesting entry of a PCT application into the European regional phase is 31 months from the filing date or, if priority has been claimed, from the priority date (Rule 159(1) EPC). However, if this deadline is missed, remedies are available that may permit entry into the European regional phase later than this deadline.

A first available remedy is further processing under Article 121 EPC. If this is not available, a second remedy may be re-establishment of rights under Article 122 EPC.

An advantage of further processing is that, in many circumstances, it is clear that further processing is available. Therefore an applicant can be certain that further processing will be granted, provided that the requisite administrative steps are completed, including payment of extra official fees, and the entry into the European regional phase will be successful.

In contrast, for an attempt to enter the European regional phase late based on re-establishment of rights under Article 122 EPC, there is always a level of uncertainty regarding whether the criteria to justify re-establishment of rights have been met, resulting in the possibility of incurring substantial costs without guaranteeing successful entry into the European regional phase. Additionally, unlike further processing, re-establishment of rights is not available after a deliberate delay.

1 - Further Processing

For further processing to be successfully used to enter the European regional phase late, it is necessary to complete all of the usual steps specified in Rule 159(1) EPC to enter the European regional phase, to pay the correct official fees necessary for further processing and to complete these requirements within the deadline for requesting further processing.

1.1 - Further Processing Fees

The calculation of the further processing fees to be paid requires great care because, if one of the further processing fees is omitted and not paid before the deadline, further processing will be refused. The following separate further processing fees are required:

  • the further processing fee for late payment of the filing fee (which is a 50% surcharge on the filing fee and the page fees due if the application comprises more than 35 pages);
  • the further processing fee for the search fee if a European supplementary search report is to be drawn up (which is a 50% surcharge on the search fee);
  • the further processing fee for the request for examination (which is a fixed further processing fee – EUR 255 at the time of writing);
  • the further processing fee for the examination fee payment (which is a 50% surcharge on the examination fee);
  • the further processing fee for the designation fee (which is a 50% surcharge on the designation fee); and
  • the further processing fee for late filing of a translation of the application into an official EPO language if one is required (which is a fixed further processing fee – EUR 255 at the time of writing).

It should be noted that the further processing fees include elements for both the formal request for examination and separately for the payment of the examination fee.

It should also be appreciated that the third year renewal fee may be due or overdue on entry into the European regional phase, especially if late entry into the European regional phase is being requested. If the third year renewal fee is overdue, an additional fee must be paid (a 50% surcharge on the third year renewal fee). The additional fee for late payment of the third year renewal fee is separate from the further processing conditions. The effect of this on the possibility of late entry into the European regional phase is discussed in further detail below.

Finally, it should be noted that additional further processing fees are not payable in respect of claims fees where the application contains more than fifteen claims. The deadline for paying any necessary excess claims fees is set by the issue of a communication under Rule 161(1) and 162 EPC, which is only issued after successful entry into the European regional phase, and is therefore not part of the requirements for entry into the European regional phase.

1.2 - Deadline for Further Processing

The deadline for using further processing to enter the European regional phase late is set by notification from the European Patent Office to the applicant that the original 31 month term for entering the European regional phase has been missed. In particular, the further processing deadline is two months from the notification of the missed deadline.

For all PCT applications that have been notified to the European Patent Office by WIPO, if the 31 month deadline for requesting entry into the European regional phase passes without such a request being filed at the European Patent Office, the European Patent Office issues a communication under Rule 112(1) EPC noting the loss of rights, namely the loss of the European regional phase. Notification of this communication to the applicant normally sets the two month period by the end of which further processing must be requested.

In this context, Rule 126(2) EPC applies, under which the communication is deemed to have been delivered to the addressee ten days after its dispatch from the European Patent Office unless it has failed to reach the addressee or reaches the addressee at a later date. This sets the earliest date that can be the deadline for requesting further processing, namely the date of the communication under Rule 112(1) EPC, plus ten days to determine the deemed notification date, plus two months to obtain the further processing deadline. It may be noted that all PCT applications that have been published and notified to the European Patent Office have an entry on the European Patent Office online register in which the communication under Rule 112(1) EPC, will be visible, enabling this deadline to be determined.

However, even where the PCT application names an agent or representative, the European Patent Office always sends the communication under Rule 112(1) EPC, noting the failure to enter the European regional phase, directly to the applicant named in the PCT application. This can cause difficulties, for example if ownership of the PCT application has changed and not been recorded at the International Bureau or if the applicant has changed address since the filing of the PCT application and not recorded this at the International Bureau. In either case, even if the change has been recorded at the International Bureau, the European Patent Office may not have updated their records before the communication under Rule 112(1) EPC is dispatched. Even where the communication is correctly sent to the applicant, particularly for large companies this may be problematic because the address for the applicant named in the PCT application may be the corporate address rather than an address of an IP department or legal department expecting to receive communications from the European Patent Office. Such communications are therefore frequently not correctly received or mislaid and, in many situations, may be returned by the postal services to the European Patent Office as undelivered.

In cases where the communication under Rule 112(1) EPC is returned to the European Patent Office, the European Patent Office will make a second attempt to send the communication by post. Where at least a second attempt to send the communication under Rule 112(1) EPC to the applicant has clearly failed, namely the communication has been returned undelivered by the postal services, the European Patent Office will provide notification by public notice under Rule 129 EPC. Under this provision, the European Patent Office will publish a notice in the European Patent Bulletin noting that rights have been lost because the PCT application has not been brought into the European regional phase. The loss of rights is then deemed to have been notified one month after the publication in the European Patent Bulletin. The effect of this provision is that the deadline for requesting further processing is three months after the publication of the notice of loss of rights in the European Patent Bulletin.

It should be appreciated that, by the time that the European Patent Office have attempted at least twice to send the communication under Rule 112(1) EPC to the applicant and had the communication returned by the postal services and then arranged publication in the European Patent Bulletin, the further processing deadline may be at least six months after the original 31 month deadline for entry into the European regional phase.

In some cases the communication from the European Patent Office under Rule 112(1) EPC, noting the failure to enter the European regional phase, is not returned to the European Patent Office but the applicant has no clear record of when, or even if, the communication was received. This raises the possibility that, because the communication under Rule 112(1) EPC may not have been notified to the applicant, the start of the two month period by which further processing must be requested is not started, leaving the deadline potentially running indefinitely.

In practice, the requirement to pay the third year renewal fee (discussed in more detail below) precludes the possibility of being able to use further processing as a remedy for late entry into the European regional phase indefinitely. Furthermore, if the applicant is to argue that the communication under Rule 112(1) EPC was received later than the fictional ten days from its dispatch provided by Rule 126(2) EPC, the onus is on the applicant to prove this, for example with evidence of the date of receipt.

In cases in which the communication under Rule 112(1) EPC was never received by the applicant, and not returned to the European Patent Office (which would have resulted in notification by public notice as discussed above), the applicant must provide proof to the European Patent Office that the communication has not been received. Of course, providing proof that an event has not occurred is very difficult. In previous cases, we have successfully done so by detailing the administrative processes that an applicant had in place to handle communications generally, and communications under Rule 112(1) EPC in particular, together with evidence of the process that the applicant would have followed on receipt of a communication under Rule 112(1) EPC to confirm that it was in accordance with a decision taken not to bring a PCT application into the European regional phase. Under those circumstances, the absence of any record of having received the communication under Rule 112(1) EPC and the absence of any indication of the checking procedure being initiated were accepted by the European Patent Office as sufficient evidence that the communication had not been received. Evidence that there were records of having received communications under Rule 112(1) EPC on other applications and that a checking process had occurred in respect of those applications can also be very helpful. A mere statement that the applicant has no record of having received the communication under Rule 112(1) EPC is not usually sufficient.

2 - Re-Establishment of Rights

In the context of late entry of a PCT application into the European regional phase, re-establishment of rights under Article 122 EPC is technically re-establishment of rights in respect of having missed the further processing deadline discussed above. In order for such a request for re-establishment of rights to be successful, it is necessary to (i) complete all actions that would have been necessary for further processing (completing all of the usual steps specified in Rule 159(1) EPC to enter the European regional phase and paying the correct official fees necessary for further processing), (ii) additionally pay the correct official fees for re-establishment of rights, (iii) prove that rights had been lost despite “due care” having been taken and (iv) prove that the request for re-establishment of rights has been timely filed.

2.1 - Re-Establishment of Rights Fees

The calculation of the fees for re-establishment of rights also requires great care because, if the correct fees are not paid before the deadline for requesting re-establishment of rights, re-establishment of rights will be refused.

It is important to note that the European Patent Office requires more than the payment of a single fee for re-establishment of rights in respect of the late entry into the European regional phase of a PCT application. Instead, the European Patent Office requires a payment of a fee for re-establishment of rights (EUR 640 at the time of writing) for each further processing fee that was paid.

Note that in this context, the European Patent Office considers the further processing fee for the filing fee and the further processing fee for any page fees to be two parts of a single further processing fee and likewise the fixed further processing fee for the request for examination and the 50% surcharge on the payment of the examination fee to be two parts of a single further processing fee.

Accordingly, the number of fees for re-establishment for late entry into the European regional phase will usually be four re-establishment fees, or five if a translation of the PCT application into an official European Patent Office language is required.

As explained below, a re-establishment fee in respect of the late payment of the third year renewal fee may not be required, even if the deadline for payment of the third year renewal fee, including the six month grace period, has expired.

2.2 - Due Care

The question of what constitutes due care is addressed in more detail in our separate briefing on that subject. However, it should be emphasised that, for re-establishment of rights to be granted in respect of late entry into the European regional phase, it is necessary to demonstrate due care on the part of all relevant parties. This will include the applicant and will also include any external firm of patent attorneys that may have been involved in either monitoring the deadlines for entry into the national/regional phases and/or responsible for instructing European patent attorneys to bring the PCT application into the European regional phase. If a firm of European patent attorneys was involved in the handling of the case prior to the expiry of the further processing deadline, it would also be necessary to prove the due care of the European patent attorney.

The requirements for each case will entirely depend on the facts of the case. However, in general, it will be necessary to demonstrate that due care was taken in relation to any decision-making process for deciding whether or not to enter the European regional phase, due care was taken in monitoring the standard 31 month term for entry into the European regional phase and that due care was subsequently taken to identify and meet the further processing deadline. In the context of the latter item, it is usually necessary to demonstrate a suitable procedure was in place for handling the communication under Rule 112(1) EPC that is sent to the applicant and, as discussed above, normally sets the two month period by the end of which further processing must be requested.

It may be appreciated that, in a scenario in which the communication under Rule 112(1) EPC is believed to have not been received by the applicant, an explanation of the procedures in place for handling of such a communication under Rule 112(1) EPC may be applicable both to proving to the European Patent Office that the communication was not received (for the benefit of establishing that the two month period for requesting further processing has not started as discussed above and therefore that further processing is available) and for proving that the applicant took due care (for the benefit of demonstrating that re-establishment of rights should be granted).

In such circumstances, because one cannot be certain whether either request will be granted by the European Patent Office at the time of filing, it may be preferable to file a request at the European Patent Office for late entry into the European regional phase, comprising a Main Request for further processing on the basis that the communication under Rule 112(1) EPC was not received, and a First Auxiliary Request, to be considered if the Main Request is refused, requesting re-establishment of rights. If the Main Request is granted, the official fees for re-establishment of rights would be refunded.

2.3 - Deadline for Re-Establishment of Rights

The deadline for requesting re-establishment of rights under Article 122 EPC for any missed deadline is the earlier of two months from the “removal of the case of non-compliance” and one year from the unobserved time limit (Rule I36(1) EPC).

In the context of requesting re-establishment of rights in respect of late entry into the European regional phase, the removal of the cause of non-compliance is often the date on which it was discovered that erroneously the PCT application has not been brought into the European regional phase. It is important to appreciate that this date is determined based on the facts of the case. It is therefore necessary to provide the European Patent Office with evidence that proves the date on which the error was discovered in order to establish that the request for re-establishment of rights has been timely filed.

It should further be appreciated that there may be some uncertainty regarding the establishment of this date. In particular, in some situations, it is possible that the European Patent Office will, from the facts provided to them, conclude that the cause of non-compliance was removed, or in some situations should have been removed had due care been taken, at an earlier date. This could result in a finding from the European Patent Office that the request for re-establishment of rights has been filed late and is therefore inadmissible. If there is any uncertainty regarding the date on which the cause of non-compliance was removed, it is therefore important to file any request for re-establishment of rights without delay (whilst ensuring that a detailed and thorough case demonstrating due care is presented at the same time because, if the case is not substantiated by the deadline for requesting re-establishment of rights, the request will also be deemed inadmissible).

The one year period for requesting re-establishment of rights in the case of a late entry into the European regional phase runs from the further processing deadline that has been missed rather than from the original 31 month deadline because the request for re-establishment of rights is formally a request for re-establishment of rights in respect of having missed the further processing deadline. This may add further complexity to the question of determining the deadline for requesting re-establishment of rights because, unlike other deadlines that may be the subject of a request for re-establishment of rights, as discussed above it may not be a simple matter to determine the deadline for requesting further processing in respect of late entry into the European regional phase and may require the provision of evidence to demonstrate the date on which the applicant received, for example, a communication under Rule 112(1) EPC.

3 - Third Year Renewal Fee

The handling of the payment of the third year renewal fee can significantly complicate determining the steps required to bring a PCT application into the European regional phase late.

The default for a third year renewal fee is that it is due on the last day of the month containing the second anniversary of the date of filing the (PCT) application (Rule 51(1) EPC).

However, if the 31 month deadline for bringing the PCT application into the European regional phase expires after the Rule 51(1) EPC deadline for paying the third year renewal fee (which may happen if the PCT application does not claim priority or was filed within seven months of an application from which it claims priority), the third year renewal fee becomes due on the 31 month deadline, under Rule 159(1)(g) EPC. Note that this due date is not adjusted to the end of the month.

Rule 51(2) EPC provides a six month grace period in which the renewal fee can be paid with a surcharge. Where the due date is set by Rule 51(1) EPC, the grace period extends to the end of the month that is six months after the second anniversary of the filing date. Where the due date for paying the third year renewal fee is set by Rule 159(1)(g) EPC, namely 31 months from the priority/filing date, the grace period ends six months from this date. Note that in this scenario, the grace period is not extended to the end of the month.

When requesting late entry into the European regional phase under further processing, the third year renewal fee should be paid if it is shortly due or within the grace period (in which case a 50% surcharge on the third year renewal fee is also due).

If the late entry into the European regional phase is based on a request for re-establishment of rights in respect of the further processing deadline, then the third year renewal fee may not be due. This is because Rule 51(4) EPC provides that, if the rights in respect of the European application have been deemed to be withdrawn by the time the third year renewal fee was due and the rights are subsequently re-established under Article 122 EPC, the renewal fee may be paid within a period starting on the date of notification of the decision re-establishing rights.

In a case of the third year renewal fee initially being due under Rule 51(1) EPC after the initial 31 month deadline for entry into the European regional phase, under Rule 51(4)(a) EPC the fee becomes due on the date of notification of the decision re-establishing rights and is payable within four months of that date without surcharge or within six months of that date (namely a further two months grace period) with an additional fee (50% surcharge).

Where the third year renewal fee was due on the 31 month initial deadline for entry into the European regional phase under Rule 159(1)(g) EPC, such that the fee was already due when the loss of rights occurred on the day after the initial 31 month deadline, Rule 51(4)(b) EPC applies under which the third year renewal fee may be paid with an additional fee (50% surcharge) up to six months from the date of notification of the decision re-establishing the rights.

It should be noted that Rule 51(4) EPC does not apply to further processing. Therefore, if a request for late entry into the European regional phase based on further processing under Article 121 EPC is filed after the deadline to pay the third year renewal fee in the Rule 51(2) EPC grace period, it is necessary to include a request for re-establishment of rights under Article 122 EPC in respect of the deadline for paying the third year renewal fee.

This has the effect of placing a time limit on how late a request for entry into the European regional phase can be filed based on arguing that the Rule 112(1) EPC communication was never received by the applicant and therefore the further processing term has not yet started. Specifically, even if such an argument is successful, the latest that the request can be filed is one year after the expiry of the grace period for payment of the third year renewal fee (which is not affected by the further processing deadline but purely established by the date of filing of the PCT application and its earliest priority date). Beyond this date any request for re-establishment of rights in respect of the payment of the third year renewal fee will be too late.

13 February 2019

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