European Patent Office to abolish ’10-day rule’
The European Patent Office (EPO) has confirmed it will abolish the 10-day rule from 1 November 2023. This change comes as the EPO embraces the era of digitalisation. The majority of communications are now being issued digitally.
Patent Attorney, Dr Gurpreet Solanki, explains how will affect EPO deadlines:
What is the European Patent Office’s “10-Day Rule”?
Currently, under Rule 126(2) EPC, communications from the EPO are deemed to be delivered to the recipient ten days after the date of mailing – essentially thereby providing an additional ten days to respond. This is to account for any delays that might occur in the postal and courier service. However, the Administrative council of the EPO has decided to abolish the ‘10-day rule’ effective from 1 November 2023 in light of notifications and communications from the EPO now being generally accessible digitally.
Therefore, from 1 November 2023 all communications sent by the EPO will be deemed to be delivered on the date shown on the document with the deadline being calculated as the stated number of months starting from the date shown on the document.
Examples
The following examples illustrate the effect of the removal of the ‘10-day rule’ when calculating deadlines:
| Communication | Deadline | Change | |
|---|---|---|---|
| Before 1 November 2023
(No change to current provisions) |
A ‘Communication under Article 94(3) EPC’ (e.g. an examination report) is issued and dated Thursday 9 November 2022. Setting a period of four months for a response. | The deadline for response is calculated using the ‘10-day rule’:
9 November 2023 + 10 days = 19 November 2022, + four months gives a deadline of Tuesday 19 March 2023. |
Deadline + 10-day rule.
Deadline would be Tuesday 19 March 2023 |
| After 1 November 2023
(New rule applies) |
A ‘Communication under Article 94(3) EPC’ (e.g. an examination report) is issued and dated Thursday 9 November 2023. Setting a period of four months for a response. | The deadline for response is 4 months from Thursday 9th November 2023 which is Saturday 9 March 2024 (a “closed day” at the EPO). This deadline therefore rolls to the next working day at the EPO under Rule 134(1) EPC, i.e. Monday 11 March 2024 | Deadline is calculated without the 10-day rule.
Monday 11 March 2024 |
With the European Patent Office 10-day rule abolished, what if a document was not delivered to the addressee on the indicated date?
In those cases where a document does not arrive on time (whether electronically or by post), the usual safeguards are in place and the burden will fall on the EPO to prove that the document arrived on time or at all.
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 seven 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 seven 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 seven. For example, if the addressee received a document 13 days after the date marked on the document, the period for response will be extended by six days.
What should be done now?
In terms of changes in practice, those instructing their European Patent Attorneys should bear in mind that they will have to provide instructions a bit earlier than they may have done in the past in order to meet deadlines and avoid formal extensions, particularly with respect to shorter deadlines of two months set by the EPO.
Docketing systems will also need to be adjusted as there will no longer be a 10-day rule. This should result in a more simplified deadline management system as the confusion as to when the ‘10-day rule’ applies will no longer exist.
What does this mean for you?
Our teams’ impressive record of meeting deadlines set by the EPO is something we take pride in at Avidity. With this new change taking effect on 1 November 2023, our teams will be in communication with you individually. In the background, we are also changing our systems to match this new system.
Want to get in touch with one of our Attorneys to discuss this further? Please do not hesitate to contact us if you have any further questions at this time. Contact us here.
