On 14 October 2022, the Administrative Council of the European Patent Office (EPO) voted to remove the ‘ten day rule’ under Rule 126(2) EPC. Under current EPO practice, unless it can be shown to be later, a notification is deemed to be made ten days after the date shown on the communication (even if the actual receipt was well within that ten-day period). The provision was introduced in the days of postal deliveries, mainly to account for delays in delivery and provide certainty, but continued even after the EPO moved to digital communications. However, the EPO has now decided to abolish the “ten day rule” with the aim of fostering the ongoing digitalisation processes in the EPO’s patent grant procedures.
The change to Rule 126(2) EPC will come into effect on 1 November 2023. After this date, the deadline for action will be calculated using the actual date shown on the document sent by the EPO. For instance, if an examination report is dated 05 November 2023 with a four month period for replying to the report, the deadline will be 05 March 2024 and not 15 March 2024 as it would be under the current rule.
The EPO in a press release has stated that in alignment with the PCT a new rule for notification and time limit calculation will apply as of 1 November 2023. Safeguards will be available in cases where a document is not received or is received exceptionally late (more than 7 days after the date on the document). In the event of a dispute concerning the delivery of a document the EPO will retain the obligation to prove that the document was delivered and the date of its delivery.
Although this change will not be welcomed by many – since the additional ten day period has been very useful, particularly for patent attorneys who get late instructions from their clients – it is not surprising since in the recent past the EPO has digitalised a number of its internal workflows post Covid-19, including video conference oral proceedings for the majority of Examining Division oral proceedings. Abolishing the ten day rule may increase extension requests and further processing requests since patent attorneys often currently use it to file responses when receiving instructions from applicants or foreign associates very close to the stated deadline.
Notably, the ten day rule is unique to the EPO. Under the current legislation, the ten day rule is not applied to all communications. Also, the deadline needs to be calculated carefully, especially if the date of the document issued by the EPO falls in the last week of the month, as the number of days in that month then becomes critical. Many applicants and IP attorneys outside Europe are not familiar with the way the rule is calculated and this can lead to confusion as to the exact date of the deadline. The change should help eliminate such confusion.
The EPO has indicated that shifting the focus of the notification system from paper to the digital world, where electronic documents are delivered on the same day, is key for the Office’s digital transformation. This change is likely to be broadly welcomed by applicants since it is consistent with current PCT, USPTO, JPO and the practice in other major countries. Since the abolition of the ten day rule will come into effect on 1 November 2023, this should provide both applicants and their representatives sufficient time to update their systems accordingly. It is important to make note of this change, especially in view of the changes in EPO practice that can be expected from the soon to be launched Unified Patent Court.