Changes to the EPO 10-day rule

Under the current rules and regulations, the European Patent Office (EPO) has a provision that relates to the date when certain types of document sent by the EPO are deemed to have been delivered to the recipient. Specifically, under rule 126(2) of the European Patent Convention (EPC), the date of delivery for documents covered by this provision is presumed to be 10 days after the date shown on the document. So, for example, a document dated 1 March 2023, would be deemed to have been received on 10 March 2023. Hence, the deadline for response to the document is calculated from the date of deemed receipt, rather than the actual date identified on the document (with some additional peculiarities not discussed here). This provision is unique to the EPO, and, moreover, does not actually apply to all communications from the EPO. The effect of this provision was to extend the term for response by 10 days. For Professional Representatives, this meant that if instructions were received very close to the deadline, as calculated from the date of the document, there was an additional small extension, to allow the response to be prepared and filed.

The current rule relates to documents such as decisions, summonses, notices, and communications that the EPO is obliged to notify ex officio. The rationale behind the so-called “10-day rule” is to account for postal and courier delays in delivering communications sent by the EPO. However, as the electronic EPO Mailbox now covers 99% of all documents that the EPO issues, the “10-day rule” has become less relevant, as post that is sent by mail will probably already have been dispatched electronically as well.

As part of a programme to modernise the EPO, 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 dated and issued. Therefore, deadlines triggered by such EPO communications will be calculated starting from the date on the communication itself. This will bring the EPO into line with the other Patent Offices, such as WIPO, USPTO, JPO in which there is no inbuilt legal provisions for possible postal delays, and all deadlines are calculated from the date of the communication from the Patent Office.

Thus, the key change is that the “10-day rule” will be abolished and will not be applied in respect of EPO communications dated on or after 01 November 2023. This means that the deadline will be final, and late received instructions will not have a possible extension, in case an Attorney has to revert to the client for further clarification, for example.

What will change on 1 November 2023?

Documents which previously could have benefitted from the 10 day period under Rule 126(2) EPC will instead be deemed to have been received by the addressee is the date marked on the document, regardless of whether the document was sent electronically or by post. Deadlines for responses will calculated from the date on the document, with no grace period for posting. Clearly, in this case, it will be wise for Attorneys to obtain instructions from their client in advance of the deadline, in case issues arise, to ensure that there is sufficient time to deal with these, noting that the grace period no longer exists.

What if the document was not delivered on the date stated?

Under the amended versions of the above Rules, where an addressee disputes any aspect concerning the delivery of that document, the EPO retains the obligation to prove both that the document was delivered, and the date of its delivery. As is the case at present, 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 7 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.

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 for communications dated after 1 November 2023.