Unfortunately, during patent prosecution, it may occur that a deadline to perform an action required by the patent office is missed. However, do not despair! Legal remedies are sometimes available to address this. In fact, the European Patent Convention provides no fewer than three possible remedies in case a deadline is missed. Which remedy is available depends on the specific action that was missed.
A first remedy is termed “further processing”. This is a common and frequently used remedy available at the European patent office (EPO) for patent applications in cases where the application is to be refused or is refused or deemed to be withdrawn following failure to reply within a time limit vis-à-vis the EPO. 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 in the two months following this written notification by paying the fee for further processing and by completing the omitted action.
A second remedy is termed “re-establishment of rights”, also known as restoration or reinstatement. This remedy is available at the EPO for both patent applications and granted patents in cases where the applicant or proprietor, despite taking all due care required by the circumstances, was unable to observe a time limit vis-à-vis the EPO.
The 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 the 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 (e.g. Belgium, the Netherlands, France, Germany, UK, …). However, the eligibility criterion may be different since some countries apply the less strict “unintentional” criterion where the applicant or proprietor only has to show that the non-compliance with the time limit was unintentional.
A third remedy relates to renewal fees and is available in case the renewal fee was not paid on a timely basis. In such cases, the renewal fee may be validly filed in a 6 month additional period by paying the renewal fee together with a 50% increase. This remedy exists both at the EPO for European patent applications and is also available in various countries (e.g. Belgium, the Netherlands, France, Germany, UK, …) for national patent applications, national patents and European granted patents validated in those countries.
GEVERS and its highly specialized patent attorneys are available to assist you in monitoring deadlines preventing a loss of rights occurring. Furthermore, in case you missed a deadline, we are ready to assist you in attempting to remedy the ensuing loss of rights using one of the available remedies.
Michaël Moreels – European, Belgian and Dutch Patent Attorney