This note explains an important upcoming change relating to the calculation of deadlines set by the European Patent Office (EPO), taking effect from 1 November 2023. Communications dated on or after this date will no longer have an additional 10 days added to their period for reply. Read on for more information, or please get in touch with us.
What is the “10 day rule”?
According to the “10 day rule”, communications received from the EPO are deemed to be delivered to the addressee on the tenth day following the date of the communication. Where a time period is calculated “from notification” of the communication, the period is calculated from the date the communication is deemed to have been delivered, rather than the date of the communication or the date of actual delivery.
In practice, this means that many periods for response or taking action currently include an extra 10 days. For example, under the current system, the deadline for responding to an examination report dated 1 March 2023 inviting the applicant to respond within a period of 4 months from the notification of the examination report, is 11 July 2023 (1 March 2023 + 10 days + 4 months).
What is happening?
The EPO is abolishing the “10 day rule”, effective from 1 November 2023. This means that all communications issued by the EPO from 1 November 2023 will be deemed to be received on the date of the communication, and any related deadlines calculated accordingly. For example, the deadline for responding to an examination report dated 1 November 2023 setting a period of 4 months for response will be 1 March 2024.
Why is this happening?
The “10 day rule” was introduced to ensure EPO users were not adversely affected by postal delays. However, since the launch of the EPO Mailbox service in 2011, and as part of the ongoing digital transformation of the patent grant procedure, 99% of EPO communications are received online and the impact of postal delays is now minimal.
When will this take effect?
This change will affect any documents issued by the EPO dated 1 November 2023 or later. Any communications dated 31 October 2023 or earlier will still be deemed to be received on the tenth day following the date of the communication. For example, the deadline for responding to a communication dated 31 October 2023 setting a “two month from notification” period for response will be 10 January 2024, whereas the deadline for responding to a communication dated 1 November 2023 setting the same two month period would be 1 January 2024 (ignoring, for the purposes of this example, EPO closed days).
How will this affect me?
As communications will be deemed to be received on the date of the communication (rather than 10 days later), under the new system applicants will have 10 fewer days to respond to a communication received from the EPO (for example, examination reports and appealable decisions). However, a benefit of the new system is that it simplifies and harmonises the calculation of EPO deadlines.
What do I need to do?
Make sure that any internal processes which calculate deadlines based on the 10 day rule are updated to reflect this change for communications dated 1 November 2023 or later.
What happens if I don’t receive a document, or receive a document late?
The EPO has several safeguards, new and existing, to prevent users being disadvantaged by communications being received late, or not at all:
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The EPO already post-dates communications, to allow them to be processed internally and issued on the date of the document, and will continue to do so.
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Where a communication is not received, and the EPO cannot prove the communication has been delivered, a new communication will be issued with a new date. The date of the original communication is then discounted and any relevant deadlines are calculated from the new date.
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The EPO is introducing a new safeguard for when a communication has been delivered exceptionally late. In this case, if the EPO establishes a communication is received more than 7 days after the date of the communication, any deadlines calculated from the date of the communication will be extended by the number of days by which the 7 days are exceeded. For example, if a document is received 12 days after the date of the communication, any deadlines calculated from the date of the communication would be extended by 5 days.
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The EPO’s “further processing” procedure, which allows applicants the opportunity to extend certain deadlines on payment of an official fee, will continue to apply for relevant deadlines.
What is not changing?
The EPO’s policy of automatically extending deadlines to the next day on which all filing offices of the EPO are open will continue to apply. For example, any deadline that falls on a weekend or another day in which at least one of the filing offices of the EPO are closed will automatically extend to the next working day. The EPO publishes the days on which its offices are closed on its website, here.
There will, of course, continue to be no additional 10 days for periods where the deadline is set by the European Patent Convention (EPC) or other legal statute, such as the deadline for filing a divisional application, the deadline for filing an EPO opposition, or the deadline for filing an application claiming priority.
If you have any questions please contact Kerry Coleman, Jamie Atkins or your usual Kilburn & Strode advisor.