Re-Establishing An Inadvertently Lapsed Patent Application At The EPO

A European patent may inadvertently lapse due to missing a deadline. This will result in a loss of rights. However, at the European Patent Office (EPO), one may request re-establishment of rights with respect to a missed time limit which results in a loss-of-rights situation.

ADMISSIBILITY - DEADLINE, ENTITLEMENT, GROUNDS, AND FEES

In most cases, the deadline for requesting re-establishment of rights is two months from the date of the removal of the cause of non-compliance with the time limit.

This may be the date that someone responsible for the application (such as the applicant or their European patent attorney) becomes aware, or should have become aware, that a deadline has been missed. In any case, re-establishment is only available for a period of up to one year after the relevant deadline expired.

The deadline is different for re-establishment regarding the right of priority, the deadline for requesting unitary effect, or the period for filing a petition for review. In these cases, the deadline for filing the request is strictly two months from expiry of the relevant period.

One must also be entitled to file the request: re-establishment is available only to applicants and proprietors of the patent / patent application. A notable exception is that an opponent may request re-establishment in respect of the time limit for filing the grounds of appeal, provided they have already validly filed a notice of appeal.

The request for re-establishment will not be deemed filed unless all of the following are completed before expiry of the re-establishment deadline:

• A request is filed in writing.
• The omitted act is completed.
• The relevant re-establishment fees are paid. The number of official fees will depend on the number of legally independent omitted procedural acts which have led to the application being withdrawn.

The request must also state the grounds on which it is based and the facts relied upon. This includes:

• The cause of non-compliance and the time and circumstances of its removal.
• Facts and supporting evidence/arguments establishing that all due care required by the circumstances was taken.

Typically, and importantly, the factual basis cannot be altered once the deadline for filing the request has expired. After expiry of the deadline, the existing facts may be clarified and further supporting evidence may be submitted.

MERIT OF THE REQUEST

The EPO will only allow a request for re-establishment if it is demonstrated that an applicant for re-establishment was unable to observe a time limit despite 'all due care' required by the circumstances having been taken. The 'all due care' requirement is much stricter than the unintentional requirement imposed by certain other patent offices such as the USPTO and UKIPO.

The definition of 'all due care' in various circumstances is shaped by case law. Therefore, a thorough understanding of the relevant case law is critical in drafting successful grounds for re-establishment. Notable decisions and rational include:

• All due care must have been taken by both the applicant and their representative (J 3/93, J1/07). The obligations of each are distinct (J 19/04).
• Typically, all due care means a standard of care which a reasonably competent applicant or representative would employ in all relevant circumstances (T 30/90).
• All due care is judged in view of the situation existing before the time limit expired (T 667/92, T381/93).
• If the cause of non-compliance involves an error in carrying out an intention to comply with a time limit, all due care will be considered to have been taken if the error resulted from exceptional circumstances or an isolated mistake within a normally satisfactory monitoring system.
• The due care standard depends on the role of the person who made said mistake (T 1477/17). However, in certain circumstances the ultimate responsibility of the representative will be overriding (CLR-III-E, 5.5.4e).
• The applicant must choose a sufficiently competent representative to advise on the matters involved (J 23/87), (CLR-III-E, 5.5.1d). If the applicant is an unrepresented individual, the standards of care required by a professional representative may not be applied (J 5/94), (CLR-III-E, 5.5.1c).

CASE STUDIES

Renewal fees

One of the most common reasons for European patents / patent applications lapsing inadvertently is the failure to pay a renewal fee. Fortunately, a six-month grace period after the due date of the renewal fee exists in which the renewal fee may still be validly paid with a 50% surcharge (the "additional fee"). Once this grace period expires, the application is recoverable only by way of re-establishment of rights with respect to the period for paying the renewal fee plus the additional fee.

Responding to communications from the Examining Division

Communications pursuant to Art. 94(3) (examination reports) may set a time limit to respond between two and four months. The time limit may be extended up to a maximum of six months upon request in advance of the deadline. If a deadline is missed or not extended in due time, then the applicant can make use of the EPO's further processing procedure by paying a further processing fee to continue prosecution of the application. The omitted act must be attended and further processing requested by paying the fee within two months of notification of a communication informing the applicant that the application has been deemed to be withdrawn.

If the deadline for requesting further processing is missed, then the applicant must request re-establishment of the right to request further processing in respect of the time limit for replying. Therefore, the applicant would be required to submit a request for re-establishment and pay the re-establishment fee, and also complete the omitted act by submitting a request for further processing and paying the further processing fee.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.