European Patent Convention · Article 122-123 extensions themselves are then also excluded from further processing, such as for example the six-month grace period for late payment of renewal fees in R51(2) EPC.
Article 122
Re-establishment of Rights
1) If despite all due care an applicant misses a time limit relating to prosecution before the EPO, and this directly leads to loss of rights in the patent application, then they may request to have their rights re-established. 2) The EPO will grant such a request provided that the particular time period is not excluded (see subsection 4); the fee is paid; and the omitted act is completed, within two months of the removal of the cause of non-compliance and within 12 months of the missed time limit. 3) If granted, the legal consequences of missing the time limit are deemed not to have occurred. 4) The following time limits are excluded from re-establishment: – the time limit for re-establishment itself; – failure to attend oral proceedings; – the periods listed in Rule 136(3) EPC. 5) A person (in a designated state) who in good faith begins or makes serious and effective preparations to begin using the invention within the period between the loss of rights and publication of the re-establishment of those rights may continue to do so. 6) Contracting states may provide their own re-establishment for non-observance of EPC time limits relating to prosecution before the respective national office. Legal Notes • The all due care requirement typically requires proof of a one-off error in an otherwise properly working reminder system, or an instance of force majeure; lack of care can arise from both the applicant and their representatives. • A time limit within the sense of Art 122 (and indeed Art 121) is a convention or EPO stipulated period for completing a procedural act. Consequently, failing to complete acts which the applicant can choose to do within another period of time (such as filing a divisional whilst the patent is pending) are not regarded as missed time limits in this sense and cannot make use of re-establishment. • Subsection 5 provides third-party rights in a similar manner to s20B(4) UKPA. • Subsection 6 accounts for the fact that subsection 1 relates to the EPO, but there are provisions in the EPC for national offices too, such as a request for conversion to a national application under Art 135(2) when a national office refuses to forward a filing to the EPO for national security reasons.
Article 123
Amendments
1) A European patent application can be amended after receipt of the search report (R137 EPC), (e.g. in response to the European search report – R70a EPC, or to the international
Study Guide to the Patents Acts (2021 edition)
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