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VI.D.2. Further processing under Article 121 EPC
An extension can no longer be requested once a period has expired (J 7/81, OJ 1983, 89). However, even Art. 121(1) EPC 1973 provided that applicants could request further processing of a European patent application if their application was to be refused, had been refused or was deemed to be withdrawn following failure to reply within a time limit set by the EPO. The new version of Art. 121 EPC now broadens the scope of application of further processing and makes it the standard legal remedy in cases of failure to observe time limits in the European patent grant procedure and related ex-parte appeal proceedings, irrespective of whether the time limits are set by the EPO or are specified in the Convention or Implementing Regulations, and irrespective of whether the legal consequence is the loss of the application or merely a partial loss of rights. In some cases it therefore replaces the re-establishment of rights, which had proved to be too complex and unwieldy (MR/2/00, p. 157). In other cases it replaces the implementing and fee-related rules established to provide a remedy where the scope of application of further processing and re-establishment of rights had proved to be too restrictive (especially R. 85a and b EPC 1973).
Under the new Art. 121(1) EPC, the applicant can apply for the further processing of his application if he fails to observe a time limit vis-à-vis the Office. However, Art. 121(4) and R. 135(2) EPC lay down exceptions to this general rule, especially with regard to the time limits for priority, remedies and the request for further processing and re-establishment of rights, and with regard to the non-observance of certain time limits for which a special remedy provision exists in the Implementing Regulations (e.g. R. 58 and 59 EPC).
Hence, in contrast to the provisions under the EPC 1973, further processing can be applied to the time limits for the payment of filing, search and designation fees, the national basic fees and the examination fees, and to the time limit for filing the request for examination (OJ SE 4/2007; MR/2/00, 157). Since further processing now also applies to time limits for fee payment, requests for further processing no longer have to be in writing. Under the new system, the request is made simply by payment of the prescribed fee (OJ SE 5/2007).
The new provision applies to applications pending when the EPC 2000 entered into force, provided that the time limit for requesting further processing had not expired, and also to applications filed since the entry into force of the EPC 2000 (Art. 1, No. 5, AC decision, OJ SE 1/2007, p. 198).
In J 37/89 (OJ 1993, 201) the Legal Board of Appeal pointed out that the applicants could overcome a loss of rights under Art. 96(3) EPC 1973 (which corresponds to Art. 94(4) EPC) resulting from the refusal of a request for a time-limit extension by requesting further processing in accordance with Art. 121 EPC 1973. At the same time, they could request reimbursement of the fee for further processing. This secondary request had to be decided on in connection with the final decision. Under Art. 106(3) EPC 1973, the decision on the secondary request could be appealed together with the final decision. The appeal could also be confined to contesting the decision on the secondary request.
In J 47/92 (OJ 1995, 180) the Legal Board of Appeal stated that further processing under Art. 121 EPC 1973 was available only in respect of those time limits the duration of which was to be determined or set by the EPO. This question has been overtaken by the new version of Art. 121 EPC.
In J 16/92 the examining division had issued a communication pursuant to R. 69(1) EPC 1973 after its first communication inviting observations had failed to elicit a response. The representative had thereupon applied for further processing of the application, requesting an extension of the time limit for filing observations concerning the first communication. The omitted act had, however, not been completed within the two-month time limit pursuant to Art. 121(2) EPC 1973. The Legal Board of Appeal concluded that where the omitted act consisted in filing a reply in substance to a first communication, it was not completed by filing a request for a time limit for submitting that reply, since a request for a time limit was not equivalent to the act the party in question had proposed performing within the time limit requested.