From 1 November 2023, recipients of EPO communications will no longer be able to benefit from the additional 10-day response period (known as the EPO "10-day rule”). Clémence de Masfrand outlines the implications.
The European Patent Office (EPO) is, from 1 November 2023, abolishing the "10-day rule" (Rule 126, notification by postal service). This rule is based on the premise that, by post, a recipient receives a communication within 10 days, and thus allows for postal delays in delivering correspondence sent by the EPO. However, the EPO Mailbox service now means that most EPO communications are received online, negating the impact of postal delays. The EPO 10-day rule has been abolished as part of the EPO’s ongoing digital transformation and brings the notification period into alignment with the Patent Cooperation Treaty (PCT), as well as many other territories around the world.
The current process
Under the EPO 10-day rule, a communication is deemed to be received on the 10th day following the date of the communication, with the final deadline for responding to the communication calculated from this date. It should be noted that the 10-day rule only applies to the deadlines set by the EPO, such as official letters, and not to the deadlines set by the EPC.
For example, the deadline for responding to a communication dated 28 October 2022, setting a response deadline of four months, is 7 March 2023, as illustrated below.
What changes on 1 November 2023?
As of 1 November 2023, all communications will be deemed received on the date of issue. The final deadline for responding to a communication will be calculated from the date of the communication. For example, the deadline for responding to a communication dated 13 November 2023, setting a response deadline of four months, will be 13 March 2024, as illustrated below.
The new rule will apply to all communications issued on or after 1 November 2023.
What happens if something goes wrong?
In the event that a document is not received, or is received late, the following remedies are available:
- Document not received
As is currently the case, if the EPO is unable to prove that a document has been delivered, a new communication will be issued with a new date. The original communication is discounted, and any relevant deadlines are calculated from the new date.
- Document received exceptionally late
The EPO considers that a document is normally received within seven days of its issue date. If a communication is received more than seven days after the date of the communication, any deadlines calculated from the date of the communication will be extended by the number of days beyond these seven days. For example, if a document is received 11 days after the date of the communication, any deadlines calculated from the date of the communication would be extended by four days.
- Document received but the EPO is unable to establish the date of service
If a document has been received by the addressee, but the EPO is unable to prove notification due to irregularities, the date that the EPO can establish as the date of receipt will be used for the purpose of notification, and deadlines calculated from this date.
What does the end of the EPO 10-day rule mean for patent applicants?
The end of the 10-day rule for applicants will shorten the term for responding to EPO communications. Patent attorneys and applicants should ensure, therefore, that their internal processes and tools are updated to reflect this change.
For patent attorneys who work with overseas law firms, increased vigilance of deadlines will be required, given there are often more intermediaries, to ensure instructions are received in good time.
For further support on EPO communications, please speak to your Novagraaf attorney or contact us below.
Clémence de Masfrand is a Patent Attorney based in Novagraaf’s Paris office.