Late Entry Into European Regional Phase

The deadline for requesting entry of a PCT application into the European regional phase is 31 months from the filing date or, if priority has been claimed, from the priority date (Rule 159(1) EPC). However, if this deadline is missed, remedies are available that may permit entry into the European regional phase later than this deadline.

A first available remedy is further processing under Article 121 EPC. If this is not available, a second remedy may be re-establishment of rights under Article 122 EPC.

An advantage of further processing is that, in many circumstances, it is clear that further processing is available. Therefore an applicant can be certain that further processing will be granted, provided that the requisite administrative steps are completed, including payment of extra official fees, and the entry into the European regional phase will be successful.

In contrast, for an attempt to enter the European regional phase late based on re-establishment of rights under Article 122 EPC, there is always a level of uncertainty regarding whether the criteria to justify re-establishment of rights have been met, resulting in the possibility of incurring substantial costs without guaranteeing successful entry into the European regional phase. Additionally, unlike further processing, re-establishment of rights is not available after a deliberate delay.

1 - Further Processing

For further processing to be successfully used to enter the European regional phase late, it is necessary to complete all of the usual steps specified in Rule 159(1) EPC to enter the European regional phase, to pay the correct official fees necessary for further processing and to complete these requirements within the deadline for requesting further processing.

1.1 - Further Processing Fees

The calculation of the further processing fees to be paid requires great care because, if one of the further processing fees is omitted and not paid before the deadline, further processing will be refused. The following separate further processing fees are required:

the further processing fee for late payment of the filing fee (which is a 50% surcharge on the filing fee and the page fees due if the application comprises more than 35 pages); the further processing fee for the search fee if a European supplementary search report is to be drawn up (which is a 50% surcharge on the search fee); the further processing fee for the request for examination (which is a fixed further processing fee - EUR 255 at the time of writing); the further processing fee for the examination fee payment (which is a 50% surcharge on the examination fee); the further processing fee for the designation fee (which is a 50% surcharge on the designation fee); and the further processing fee for late filing of a translation of the application into an official EPO language if one is required (which is a fixed further processing fee - EUR 255 at the time of writing). It should be noted that the further processing fees include elements for both the formal request for examination and separately for the payment of the examination fee.

It should also be appreciated that the third year renewal fee may be due or overdue on entry into the European regional phase, especially if late entry into the European regional phase is being requested. If the third year renewal fee is overdue, an additional fee must be paid (a 50% surcharge on the third year renewal fee). The additional fee for late payment of the third year renewal fee is separate from the further processing conditions. The effect of this on the possibility of late entry into the European regional phase is discussed in further detail below.

Finally, it should be noted that additional further processing fees are not payable in respect of claims fees where the application contains more than fifteen claims. The deadline for paying any necessary excess claims fees is set by the issue of a communication under Rule 161(1) and 162 EPC, which is only issued after successful entry into the European regional phase, and is therefore not part of the requirements for entry into the European regional phase.

1.2 - Deadline for Further Processing

The deadline for using further processing to enter the European regional phase late is set by notification from the European Patent Office to the applicant that the original 31 month term for entering the European regional phase has been missed. In particular, the further processing deadline is two months from the notification of the missed deadline.

For all PCT applications that have been notified to the European Patent Office by WIPO, if the 31 month deadline for requesting entry into the European regional phase passes without such a request being filed at the European Patent Office, the European Patent Office issues a communication under Rule 112(1) EPC noting the loss of rights, namely the loss of the European regional phase. Notification of this communication to the applicant normally sets the two month...