Is More Time Available for Entering the European Regional Phase of a PCT Application?
If the 31 month from priority/filing deadline for entry of a PCT application into the European regional phase has been missed, it is often still possible to enter the European regional phase.
The first available remedy is further processing. Provided the deadline is met, this is automatically available. It can therefore be used to intentionally postpone entry into the European regional phase. The use of further processing requires the payment of significant additional official fees – including a 50% surcharge on most of the official fees usually payable on entry into the European regional phase.
The deadline for using further processing is two months from the receipt of a notice of loss of rights communication from the European Patent Office, which is issued after the expiry of the normal 31 month deadline if no request to enter the European regional phase has been filed. The notice of loss of rights communication is sent to the applicant identified in the PCT request and not to the representative. It is therefore important to ensure that steps are taken to ensure that prompt action is taken when the notice of loss of rights communication from the European Patent Office is sent to the applicant.
If it can be proven that the notice of loss of rights communication was not received by the addressee, the further processing deadline may not be set, and further time for late entry may be available. In some instances, the notice of loss of rights communication sent to the applicant may be returned to the European Patent Office as undeliverable. In this case, the European Patent Office will re-attempt delivery of the notice of loss of rights communication. If this also fails, notification of the loss of rights, setting the further processing deadline, will be effected by publication. In such cases, the further processing deadline will be many months after the original 31 month deadline.
Re-establishment of rights
The second available remedy is re-establishment of rights. This is available only if the failure to enter the European regional phase by the expiry of the further processing deadline was unintentional and provided it can be proven to the European Patent Office that due care was taken by all parties involved, including the applicant and external counsel, to bring the PCT application into the European regional phase in a timely manner. This remedy is therefore not available for intentionally postponing entry into the European regional phase.
The due care standard is strictly applied by the European Patent Office and detailed submissions, supported by appropriate evidence, will need to be submitted for any case to have a reasonable likelihood of success. This may include proving that the applicant took due care in the handling of the notice of loss of rights communication issued by the European Patent Office after the expiry of the normal 31 month term.
The deadline for requesting re-establishment of rights is the earlier of one year from the expiry of the further processing deadline and two months from the so-called date of removal of the cause of non-compliance. The date of removal of the cause of non-compliance is often the date when an error that prevented the case being brought into the European regional phase was discovered. In some instances this date has been deemed to be the date when the error should have been discovered had the applicant or their external counsel taken appropriate care. In any case, it is necessary to prove to the European Patent Office the date when the cause of non-compliance was removed in order for the request for re-establishment of rights to be admissible.
We have two attorneys, Toby Hopkin and John Leeming, with considerable experience of preparing cases to prove to the European Patent Office that due care was taken where our clients have unintentionally missed deadlines, including the deadline for European regional phase entry. If you believe that re-establishment of rights may be required for a case, we would be happy to discuss the circumstances with you in order to gauge the likelihood of success.
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