In October 2022, the Administrative Council of the European Patent Office (EPO) decided to amend the rules relating to the notification date of documents served by the EPO by postal services or electronic means.  Many EPO deadlines, such as response dates for voluntary amendments, replying to examination reports, attending to grant formalities and providing comments in Opposition and Appeal proceedings (to name but a few) are calculated by adding a set period to the notification date of the relevant EPO document.  

This change, therefore, significantly impacts the calculation of response deadlines in EPO proceedings. The amended rules are Rules 126(2), 127(2) and 131(2) EPC and the amendments will enter into force on 1 November 2023.  In the March edition of the Official Journal, the EPO have provided details and guidance on how the amended rules will work.

Historically, documents from the EPO were despatched by post and would take a number of days to reach the intended recipient(s).  The EPO took this postal period into account with Rule 126(1) EPC by creating a deemed notification date that was 10 days later than the date marked on the despatched document.  Firstly, 10 days are added to the document date to give the deemed notification date and then the response period is added to this notification date to arrive at the response deadline.  This is the EPO’s “ten-day rule” and this rule will continue to apply to all documents dated up to and including 31 October 2023.

However, as the EPO has transitioned to a digital platform, fewer and fewer documents are being served by post and now 99% of all documents issued by the EPO are done so digitally providing instantaneous notification.  The amendments to Rules 126(2), 127(2) and 131(2) EPC have been made to reflect this and to simply the notification fiction. 

From 1 November 2023, documents from the EPO arriving by post or electronically will be deemed notified on the date printed on the document.  Thus the “ten-day rule” will be abolished.  For those of us who regularly take the “ten-day rule” into account when calculating response deadlines, this means that we will have to adjust to having ten days less for responding to the EPO.

Of course, there may still be instances when documents do go astray or are received exceptionally late, and the EPO has provided safeguards against this in amended Rules 126(2) and 127(2) EPC.  Importantly, if a party disputes that a document has been notified, then the obligation resides with the EPO to prove that both the document was delivered and the date of its delivery. 

As is the case today, if the EPO is unable to prove that a document has been delivered, then notification is deemed to have not occurred and the period linked to that document will not be considered to have started. The document in question will be reissued with a new date and any period and thus deadline will run from that new date.     

For a document that is delivered late, it is considered to be exceptionally late if it is delivered more than seven days after the notification date.  If notification is contested and the EPO cannot show that the document was delivered within seven days of the date it bears, the period and deadline is extended by the number of days by which these seven days are extended.  So, if a document is received 12 days after the date it bears, the period and resultant deadline is extended by five days.  By contrast, if the EPO's investigation shows that a document was received, for instance, four days after the date it bears, no additional time will be added to the period for response.  The EPO has provided some very helpful schematics to illustrate the application of the new rules which can be found in the Official Journal (OJ EPO 2023 A29).

The abolition of the ten-day rule makes sense in the digital era but it does remove the safety net that has been a regular feature of European patent practice for many years.  Whilst these changes will not take effect until 1 November 2023, perhaps we should all start to take account of the new rules sooner rather than later so that we are all ready when the time comes.

If you have any questions about this or any other IP matters, please do not hesitate to contact us at docketing@secerna.com