A reply lost in the docket: further processing or re-establishment
EP application 2 901 233.4 belongs to Nordlicht Geratetechnik GmbH, a thirty-person company whose files are handled by a single in-house patent attorney using an electronic docket with a paper back-up printout. The examining division issued a communication under Article 94(3) EPC dated 4 March 2024, notified on the same day to the MyEPO Mailbox, setting a four-month period. On 2 July 2024 the attorney filed a request for a two-month extension, which the division granted on 9 July 2024, so the period expired on 4 September 2024. The substantive reply had been drafted but never filed. The attorney responsible left the company on 30 August 2024. On 15 August 2024 an assistant wrongly marked the case 'reply filed' in the docket and deleted the reminder; nobody checked the entry. On 20 September 2024 the EPO despatched a communication under Rule 112(1) EPC stating that the application is deemed withdrawn. A new attorney instructs your firm on 25 September 2024. The drafted reply can be finalised quickly, and the client also wants to know whether a divisional application can still be filed.
1. Identify the available remedy, the exact acts required and the deadline, and explain why it is the right route here.
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The remedy is further processing under Rule 135(1) EPC. The failure to reply to an Article 94(3) communication leads to deemed withdrawal under Article 94(4) EPC, and the EPO has confirmed that loss of rights in the Rule 112(1) communication of 20 September 2024. That notification opens a two-month period, computed under Rules 131 and 134 EPC from 20 September 2024, which expires on Wednesday 20 November 2024.
Two acts, both essential and both within the same two months: (i) complete the omitted act, i.e. file the full substantive reply to the Article 94(3) communication - a placeholder or a request for more time will not do; and (ii) pay the further-processing fee. If either is missing, the application stays dead.
Why this route. Further processing is available for the period for replying to an examination report, requires no proof of fault or care, and is decided by the examining division as a matter of course. The client keeps the examination fee already paid and the application keeps its filing date; the only losses are the further-processing fee and the time. Note that the two-month Rule 112 period is not a fresh chance to draft: the reply must be substantively complete, so the existing draft has to be reviewed for accuracy against the current state of the file before filing.
Divisional. A divisional can only be filed while the parent application is pending. Once the parent is deemed withdrawn that route closes, so the further-processing request must be filed and allowed before any divisional is filed. Advise the client not to wait until mid-November.
2. The client asks whether it would be better to request re-establishment of rights instead, because it considers the docket error excusable. Advise on the requirements and the prospects.
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Requirements. Re-establishment under Article 122 EPC requires a written request within two months of the removal of the cause of non-compliance and at the latest within one year of the expiry of the missed period (here 4 September 2025 at the outside), payment of the re-establishment fee and of the omitted fee, a reasoned statement of the facts, and evidence. The substantive test is that the applicant took all due care required by the circumstances.
Prospects on these facts: poor. The system had a single point of failure: one attorney, one electronic docket, and nobody checking the entries. The departure of that attorney was foreseeable and no handover procedure existed. Worse, the error was not an isolated slip in a functioning system but the deletion of a reminder combined with an untrue status entry that nobody verified. Isolated errors in an otherwise watertight system can be excused, but an unreviewed single-person docket with a departing responsible person usually cannot.
Strategic advice. Further processing is the correct and cheaper route because it does not require you to prove anything. Running re-establishment in parallel is not useful: both procedures address the same period, and a request for re-establishment becomes unnecessary once the further-processing request succeeds. It also costs an extra fee, generates evidence obligations and creates a written record of the firm's internal failure that may later be used against the client. Keep re-establishment in reserve only if the further-processing request is itself mishandled.
3. The client also asks whether it can simply contest the loss of rights by requesting a decision and then appealing. Explain that route, its deadlines and its risks.
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The route. Under Rule 112(2) EPC, if the applicant does not accept the assessment in the Rule 112(1) communication, it may request a decision within two months of that communication - here by 20 November 2024. The examining division then issues a reasoned, appealable decision, and an appeal lies within two months of notification of that decision (Article 108 EPC) on payment of the appeal fee.
Why it does not help here. A request for a decision is a challenge to the finding that rights were lost - for example, because the reply was in fact filed in time or the notification was defective. On these facts the loss of rights is real: the reply was never filed. A decision would simply confirm the withdrawal, and the appeal would fail.
The real risk. The Rule 112(2) period runs in parallel with the two-month period for further processing. If you spend the time on a request for a decision and an appeal, the further-processing window closes and the application is lost for good. Further processing also makes any request for a decision pointless, because the legal consequence complained of disappears.
Correct sequence. File the further processing request and the reply by 20 November 2024, and do not request a decision. Reserve the Article 112(2) / appeal route for a case where the EPO's factual premise is wrong, such as a communication sent to the wrong address or a reply filed but not registered in the electronic file.