Potentially extend further processing from 2 months to 1 year!
This article explains the surprising benefit of an out-of-date patent applicant address, and as a result how a patent applicant can potentially extend from the statutory 2 months to around 1 year the further processing period in which their lapsed European patent application can be revived.
3 questions are answered:
- What is the ordinary deadline for entering the national or regional phase of an international patent application?
- How can further processing be used if the conversion deadline is missed?
- Why can there be a surprising benefit of an out-of-date applicant address?
If the ordinary deadline for an international patent application to enter the European regional phase has been missed, one may wonder if it is possible to enter late, and, if so, how late. A patent applicant not maintaining an up-to-date address for their international patent application may provide a surprising benefit in this context in some cases.
What is the ordinary deadline for entering the national or regional phase of an international patent application?
The international phase of an international patent application, also known as a PCT application, ends at 30 months from the priority date of the application. This is generally also the deadline to convert the application into national or regional patent applications. However, for a European patent application, along with applications in several other territories, the deadline is actually 31 months from the priority date.
So, for filing a European patent application stemming from an international patent application, the ordinary deadline for entry is already extended by one month compared to many other territories.
How can further processing be used if the conversion deadline is missed?
If the applicant misses this deadline, it is still possible to enter the regional phase for Europe (i.e. to pursue European patent rights) via “further processing”.
Further processing is a mechanism which allows an applicant to action some types of deadline which fall due at the European Patent Office (EPO) after the deadline is passed. If one of these types of deadline is missed, the European Patent Office will send a letter notifying the applicant of the loss of rights in the European patent application and setting a new deadline of two months from the date of the letter to remedy the missing action.
Since it normally takes some time for the European Patent Office to issue the “loss of rights” communication, the patent applicant will typically get slightly more than two months from the missed deadline to take the required action.
Crucially, the European Patent Office does not require the applicant to have missed the deadline for any particular reason to benefit from further processing. It is an “as of right” remedy, and so is available whatever the applicant’s situation.
However, large penalty fees are needed to be paid under the further processing regime for European regional phase entry. Therefore, it is best not to rely on further processing unless strictly necessary.
You may wonder why the rule around further processing is available for the European regional phase deadline, since the European phase has technically not even started when the deadline falls due and the applicant may have not yet even decided to file a European patent application. However, under Article 153(2) EPC, an international patent application is considered equivalent to a regular European patent application. As such, the European Patent Office will have already assigned the international patent application a European patent application number. It treats the missed European regional phase deadline like a normal deadline within the European patent application process and sends the letter notifying the patent applicant of the loss of rights.
As a general warning, although the further processing mechanism is available for the regional phase entry deadline, it is not available for all types of deadlines which fall due at the European Patent Office. Care should always be taken to respond by the noted deadline.
Why can there be a surprising benefit of an out-of-date applicant address?
The European Patent Office sends the letter setting the further processing deadline to the applicant at the applicant’s address given on the applicant’s international patent application. This is the case even if there is a named representative (usually a patent agent or patent attorney firm) for the international patent application, and even if the applicant is outside of Europe. This is unusual, since normally only the named representative will receive communications from patent offices.
By the time the European Patent Office sends the letter, it may have been more than two and a half years since the applicant recorded their address on the international patent application. Applicants often move address and do not always take care to have their address quickly updated on patent applications. The international postal system is also notoriously unreliable, particularly if the sender and receiver write in different languages or writing systems. As such, it is not uncommon for the letter sent by the European Patent Office to never be received by the applicant, and can often instead be returned to the European Patent Office as ‘undelivered’.
In this ‘undelivered’ scenario, since the applicant would not have been notified of the two-month further processing deadline, under the law, the deadline would not take effect.
Therefore, the European Patent Office then sends a further letter to the same address, again attempting to notify the applicant of the loss of rights, and setting a further deadline of two months.
If this further letter is also returned, and so the applicant has still yet to be notified of the loss of rights, the European Patent Office resorts to notifying the applicant via a public notice in their official periodic bulletin, in accordance with Rule 129 EPC.
The applicant is finally deemed notified after one month from the publication of this notice in the bulletin. The deadline to enter the European Regional Phase late then becomes two months from the applicant having been deemed notified via this method. This means that the deadline to respond will be three months from that bulletin publication.
Since the letters can take time to be sent and returned across the international postal system, all of this bureaucracy means that the applicant may be able to enter the European regional phase very late. The ultimate deadline could be more than a year from the ordinary deadline, as opposed to the more typical two month period.
As such, the applicant taking a relatively careless attitude to updating their address can provide the benefit of allowing particularly late European regional phase entry, in certain circumstances.
However, despite this possible benefit, we would always recommend that the applicant’s address be kept up to date, even if an agent is named who will receive communications from the patent office. Failure to do so can cause complications, for example, causing delays or issues if selling or litigating the patent right, and potentially even putting the patent application at risk in a rare instance where a communication is dispatched directly to the applicant.
Thus, while this mechanism should certainly not be relied upon, if the applicant has changed their mind and decided that they would like to enter European regional phase, it is always worth contacting us to check if this might still be possible.
To learn more about how Albright IP can help you secure, protect, and commercialise your ideas, contact us via email, by telephone: +44 (0) 1242 691 801, or using the form below and we will be happy to advise and guide you.
