Key Points:
- the “10-day rule” will be abolished and will not be applied in respect of European Patent Office (EPO) communications dated on or after 01 November 2023.
- deadlines triggered by such EPO communications will be calculated starting from the date on the communication itself (and without first adding 10 days).
- one important benefit is that the confusion surrounding when to apply, and when not to apply, the “10-day rule” will be removed (since it will no longer exist).
- one important drawback is that the affected periods for response will be 10 days shorter; that may not be important in situations where the period is quite long, but it may be more important with shorter deadlines (e.g., a 2-month deadline).
- the “actual” date of receipt will no longer play any role; however, if the addressee receives a communication more than 7 days after the date on the communication, then the period for response is extended by the number of days more than 7 (the new “7-day rule”, which is similar to corresponding Rule 80.6 PCT for International (PCT) applications).
What happened?
On 13 October 2022, the Administrative Council of the European Patent Organisation issued a decision amending a number of the Implementing Regulations (“Rules”) of the European Patent Convention (EPC). The decision was published in the EPO Official Journal (at EPOJ, 2022, A101) and affects, among others, the Rules regarding “notification”, i.e., the means by which the EPO communicates with parties (e.g., applicants, proprietors, opponents, etc.). More specifically, the wording in Rules 126(2), 127(2), and 131(2) EPC has been amended. The newly amended versions of these Rules will take effect on 01 November 2023.
The EPO subsequently published its own “Notice from the European Patent Office dated 6 March 2023 concerning amended Rules 126, 127 and 131 EPC” in the EPO Official Journal (at EPOJ, 2023, A29) which describes how the EPO will actually apply the new rules.
Again, as mentioned above and as discussed in more detail below, the key change is that the “10-day rule” will be abolished and will not be applied in respect of EPO communications dated on or after 01 November 2023.
What is the “10-Day Rule”?
Rules 126(2), 127(2), and 131(2) EPC relate to documents such as decisions, summonses, notices, and communications which the EPO is obliged to notify ex officio according to Article 119 EPC. The “10-day rule” currently in force through the present versions of the above Rules sets the date on which the respective document is deemed to be received by the addressee as 10 days after the date marked on the document. According to the present versions of the Rules, deadlines for response are calculated as the date marked on the respective document plus 10 days (to obtain the deemed date of notification) plus the period mentioned in the document.
The rationale behind the “10-day rule” is to account for postal and courier delays in delivering communications sent by the EPO. However, as the electronic EPO Mailbox now covers 99% (by volume) of all documents the EPO issues, the “10-day rule” has become increasingly redundant. Accordingly, the EPO was motivated to update the Rules to reflect the move to digital communication.
How are the Rules changing?
According to the updated versions of Rules 126(2) and 127(2) EPC, the date on which any of the documents referred to above is deemed to be received by the addressee is the date marked on the document, regardless of whether the document was sent electronically or by post. In turn, deadlines for response are calculated from the date on the document (thus abolishing the 10-day rule).
Consistent with current practice, under amended Rule 127(2) EPC, electronic notification will not occur before the date on the document. That is, the decisive date is the date on the document even where the addressee was able to access the document via the EPO Mailbox before this date.
In a first example, a “Communication under Article 94(3) EPC” (e.g., an examination report) is issued bearing a date of Monday 23 October 2023 and setting a period of 4 months for response. The deadline for response is calculated using the “10-day rule”: 23 October 2023 plus 10 days gives 02 November 2023, plus 4 months gives Saturday 02 March 2024 (a “closed day”), which “rolls” (Rule 134(1) EPC) to Monday 04 March 2024.
In a second example, a “Communication under Article 94(3) EPC” (e.g., an examination report) is issued bearing a date of Thursday 02 November 2023 and setting a period of 4 months for response. The deadline for response is calculated without using the “10-day rule”: 02 November 2023 plus 4 months gives Saturday 02 March 2024 (a “closed day”), which “rolls” (Rule 134(1) EPC) to Monday 04 March 2024.
What if a document was not delivered to the addressee on the indicated date?
Under the amended versions of the above Rules, where an addressee disputes any aspect concerning the delivery of that document, the EPO retains the obligation to prove both that the document was delivered, and the date of its delivery.
As is the case at present, if the EPO is unable to prove delivery of the document, the document is reissued with a new date and any deadline set by the document is deemed to begin on the new date. Any deadlines set by the date of the undelivered document are deemed not to have commenced.
If the EPO is able to prove that the document was delivered, but on a date later than the one marked on the document, then under the amended Rules it is relevant how many days have elapsed between the date marked on the document and the actual delivery date.
If the document was delivered within 7 days of the date marked on the document, no adjustment is made and any period for response set by the document starts on the date of the document.
However, if the document was delivered more than 7 days after the date marked on the document, this is considered “exceptionally late” and so any deadline set by the document is extended by the number of days from the date on the document to its actual delivery date, minus 7. That is, if the addressee received a document 15 days after the date marked on the document, the period for response will be extended by 8 days.
In an example, a “Communication under Article 94(3) EPC” (e.g., an examination report) is issued bearing a date of Thursday 02 November 2023 and setting a period of 4 months for response. However, the addressee actually receives it on Friday 17 November 2023 (i.e., 15 days later). If the EPO is informed, and they cannot prove otherwise, then the period for response is extended by 8 days (i.e., 8 days more than 7). The deadline for response is then calculated as follows: 02 November 2023 plus 4 months gives Saturday 02 March 2024, plus 8 days gives Sunday 10 March 2024 (a “closed day”), which “rolls” (Rule 134(1) EPC) to Monday 11 March 2024.
About the authors
This article was co-authored by Wilhelmus (Willum) Wytenburg and Darena Slavova.
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Wilhelmus (Willum) Wytenburg
Wilhelmus (Willum) deals with patent drafting, prosecution and opposition in all key jurisdictions. His particular area of focus is the pharmaceutical sector, where he has extensive experience working on small molecules for therapy of a range of indications, and spanning early drug discovery projects through to clinical candidates. He works with a broad range of clients – primarily in the UK, Europe, and the US. They include universities and spin-out companies, as well as large multinational pharmaceutical corporations.
Email: wjw@mewburn.com
