Is late entry into the European regional phase possible?
1st December 2020
If you are considering taking your PCT (Patent Cooperation Treaty) application forward into Europe, you must do so within 31 months from the earliest claimed priority date of the application (or from the PCT filing date, if no priority is claimed). Entry into the European phase requires the filing of a form and paying official fees to the European Patent Office (EPO). An applicant that does not have a residence or place of business with a member state of the European Patent Convention will need to appoint a professional representative before the EPO.
But what happens if you have missed the 31-month deadline? There are options available which may permit late entry into the European regional phase.
There is a window in which you can enter the European regional phase late ‘as of right’ by paying additional official fees. Shortly after the 31-month deadline, the EPO will issue a notification stating that the European patent application is deemed withdrawn. The applicant will be given a period to enter the European regional phase late if the applicant requests “further processing” under Article 121 EPC. Within that period all the overdue official fees must be paid with a 50% surcharge, which makes this a relatively costly option.
Please be aware that the deadline for using further processing is 2 months from the date of notification of the missed deadline by the EPO. If you miss this further processing deadline, your only option for entering the European regional phase is by re-establishment of rights.
Requesting for Re-Establishment of Rights
In a few rare cases, there is still the possibility to apply to restore the application by requesting a re-establishment of rights under Article 122 EPC. However, this option should be used only as a last resort, i.e. after the further processing deadline has passed, because requests of this type are only allowed at the discretion of the EPO based on evidence submitted by the applicant.
A successful re-establishment request requires that the application was not filed on time despite ‘all due care’ having been taken to meet the missed deadline and by all relevant parties. This requires that:
- the applicant always intended to enter the EPO regional phase;
- the applicant and the agent had an effective reminder system in place; and
- the deadline was missed for an unforeseeable reason.
These strict criteria exclude many ‘normal’ reasons for missing a deadline, such as simply forgetting or miscalculating the deadline, a change of mind, or poor management of cash flow.
If you have missed your initial deadline, there are only the above two options you can use in order to enter the European regional phase. Further processing is a reliable option; if all administrative tasks are completed and fees are paid in line with the deadline, entry into the European regional phase will be successful. Requesting re-establishment of rights, on the other hand, is never assured. This is because there will be uncertainty surrounding whether ‘all due care’ has been met, and many requests for re-establishment of rights are refused by the EPO.
If you’re just getting started with your patent application, use our pct2ep cost estimator to find out how much entry into the European phase will cost you.
Author: Nicholas Ferrar
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