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Table of Contents
Foreword
Index
List of regulations
Part I
Part II
Part III
Part IV
Part V
Part VI
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Legal advice 13/82 - OJ 1982, 196
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LEGAL ADVICE FROM THE EUROPEAN PATENT OFFICE No. 13/82
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Further processing of the European patent application
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The request for further processing may be filed immediately after expiry of a time limit within which to reply set by the European Patent Office.
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1.
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If the European patent application is to be refused or is refused or deemed to be withdrawn following failure to reply within a time limit set by the European Patent Office, the legal consequence provided for will not ensue or, if it has already ensued, will be retracted if the applicant requests further processing of the application (Art. 121(1) EPC). The European Patent Office has been asked whether such a request can be filed even before the applicant has received a decision to refuse the application or a communication of the loss of rights.
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2.
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The answer is yes. The time limit for filing the request for further processing is laid down in Art. 121(2) first sentence, EPC. The written request must be filed within two months of notification of the decision to refuse the application or of the communication of loss of rights. Within this time limit, the omitted act must be completed and the fee in respect of the request paid (Art. 121(2), second and third sentences, EPC; Art. 2, No. 12, Rules relating to Fees). This provision does not preclude the request being filed before notification of the decision or communication.
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3.
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Strictly speaking, the wording of Art. 121(2), first sentence, EPC - "within two months" - could be taken to mean that the time limit has a specific starting point and end point. However, on closer examination it becomes clear that the date of notification is simply taken as a reference point for calculating when the time limit expires.
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The two-month time limit provided for in Art. 121(2) EPC has been fixed so as to provide the same length of time for filing a request for further processing as for filing a notice of appeal under Art. 108 EPC or a request for a decision following the noting of loss of rights under Rule 69(2) EPC. For legal reasons, therefore, a provision similar to that laid down for the time limits in respect of the notice of appeal and the request for a decision had to be fixed in the case of the time limit for the request for further processing.
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4.
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There is nothing to indicate that a request for further processing cannot be filed between expiry of the time limit and notification of the decision or the communication. On the contrary, it is quite clear from Art. 121(1) EPC that the request is permissible even at this stage.
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This Article lays down inter alia that the legal consequence provided for does not ensue if the applicant requests further processing. This is the case only when further processing is requested before notification of the decision or of the communication, as the legal consequence provided for ensues as soon as notification takes place. The problem does not arise if the application is deemed to be withdrawn, as in this case the legal consequence is anyway linked directly to the expiry of the time limit (see Art. 96(3) EPC). The situation is different when the application is to be refused as a result of the expiry of the time limit since here the legal consequence does not ensue until the decision to refuse the application is notified. The case provided for in Art. 121(1) EPC, where the legal consequence of the expiry of the time limit does not ensue, applies here and presupposes that the request for further processing can be filed before notification of the decision or communication.
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This is the only reasonable solution. There is no reason for delaying the request for further processing, and consequently protracting the proceedings even more, once the time limit has been missed. On the contrary, it is in the interest of the applicant and the Office to resume the proceedings as swiftly as possible. If all the requirements of the request are complied with in good time, the decision to refuse the application or the noting of any loss of rights will not be necessary.
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6.
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If the request for further processing is filed at the stage of the proceedings here under consideration, it is possible that the request and the decision to refuse the application or the communication of the loss of rights will cross. In this case the applicant has already taken the necessary action to prevent the legal consequence ensuing or to have it retracted. If applicants wish to establish beyond doubt that the request for further processing has in fact been received at the Office, they can enclose with the request an acknowledgement of receipt, prepared by themselves, which the EPO will immediately return to them by post (see the information in OJ EPO 1979, 336). This will avoid the need for further enquiries.
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