April 2023 IMPORTANT NOTE TO ALL APPLICANTS FOR EUROPEAN PATENTS AND THEIR REPRESENTATIVES
The EPO “10-day rule” has for a long time effectively acted as a grace period during which certain responses can be timely filed after the deadline calculated from the face of an official communication only. However, the EPO are abolishing the 10-day rule and for deadlines set after 1 November 2023 this effective extension will not apply. Therefore, it is important that applicants and their representatives, who commonly rely on the grace period offered by the 10-day rule, recognise and remember that this option will not be available to them after 1 November 2023.
Under the current versions of Rules 126 and 127 EPC, communications/documents are deemed to have been notified to the recipient on the tenth day following the date of the document (regardless of how they are transmitted – electronically or by postal services).
Many time limits that applicants for European patents have to adhere to are set by communications issued by the EPO. Deadlines which are not set by the EPC or the Implementing Regulations, but instead set by a document from the EPO, are calculated based on the date on which the document is notified to the recipient (i.e. the applicant or their representative). The most common examples of such time limits are deadlines for responding to examination reports issued by EPO Examiners.
Currently, Rules 126 and 127 EPC state that documents are deemed to have been notified to the recipient on the tenth day following the date of the document.
The reasoning for this “10-day rule” is somewhat historic and was implemented at a time when all communications were sent by post. The legal fiction that a document is deemed notified within 10 days of its date of issue was intended to compensate for the time taken for postal services to deliver documents from the EPO to recipients. Even as the EPO have moved to issuing virtually all communications electronically, such that recipients receive them immediately without having to wait for postal services, the 10-day rule has continued to be applied to documents delivered by both electronic and postal means.
In practice, this has meant that applicants have an extra 10 days (approximately, not always exactly) to respond to a communication, compared to the nominal deadline that would be calculated by adding the response period to the date printed on the relevant document. This can therefore effectively act as a grace period during which a response can be filed beyond the nominal deadline, with the response being deemed timely filed by the EPO.
As part of a programme to modernise the EPO’s practice, as of 1 November 2023, the 10-day rule will no longer apply. More specifically, for communications issued on or after 1 November 2023, these will be deemed notified on the day on which they are issued (subject to the safeguards discussed below). This means that for any deadlines set by communications issued on or after 1 November 2023 applicants and their representatives will not be able to make use of the 10-day rule for filing responses beyond the nominal deadline. Although in some cases extensions of time and further processing may be available, these do not apply to all deadlines and therefore the consequence of responding past the nominal (and now final) deadline may be severe and result in refusal or deemed withdrawal of a European patent application.
It is important that applicants and their representatives, who commonly rely on the grace period offered by the 10-day rule, recognise and remember that this option will not be available to them after 1 November 2023.
Safeguards
The EPO have clarified that they will retain the obligation to prove that a communication/document has been delivered to a recipient and on what date it was delivered. Accordingly, it is possible for recipients to dispute the assumption that communications have been delivered and request recalculations of any relevant time limits, as appropriate.
In the event that the recipient alleges that a document was never delivered, and the EPO are unable to provide proof that it had been delivered, any time periods set by the issuing of the document will be considered not to have started. The undelivered document will then be reissued with a new date, such that any time periods are set from the date of the reissued document.
If a document is delivered more than 7 days after the date of the document (and the EPO cannot prove that the document reached the recipient within those 7 days), then any time periods set by the document will be extended by the number of days late the document was received (compared to the date on the document) minus 7. As an example, if the recipient receives the document 13 days after the date on the document, any time limits set by the document will be extended by 6 days.
Although these safeguards are welcomed, with virtually all communications issued by the EPO now being transmitted electronically, it is expected that they will be relatively rarely invoked.
