It’s final – as of 1 November 2023, the so-called “ten-day rule” as we know it will disappear. This is sad news for Patent Attorneys as it is probably one of the most popular rules of the European Patent Convention (EPC).
What is the ten-day rule?
In layman’s terms, Rules 126(2) and 127(2) of the EPC determine when the notifications of the European Patent Office (EPO) sent by postal mail and by electronic means, respectively, are considered to have been delivered. More specifically, it allows notifications made by registered post or using electronic means of the EPO as received ten days after they were sent or even later if they are received later (or if they are lost and never arrived).
For example, even though an EPO communication is dated 1 June 2023 and has a response period of two months, the date of notification to the recipient is given as 11 June 2023 by legal fiction, meaning that those two months do not actually expire on 1 August 2023, but on the 11th of that month. However, in practice, attorneys usually prefer to indicate 1 August 2023 to their clients as the expiration date. In other words, the “ten-day rule” is used as a safety net, giving Attorneys and clients a few “extra” days to act. This is very useful when, for example, the client needs time to reflect on their patent portfolio, meet with different departments and make a decision on a particular case that may even mean putting on the white coat, going back to the laboratory and doing additional experiments. This causes them to cut it as close to the deadline as possible before giving instructions to their long-suffering Attorney who has been spamming them with reminders. This situation is quite common when responding to office actions of the EPO.
The “ten-day rule” is a peculiarity of the EPC that has no equivalent in many other jurisdictions. Consequently, its use sometimes gives our colleagues outside Europe headaches, especially when they fail to apply it correctly, causing the breach of a term with the corresponding fright.
The elimination of this original rule is part of a digital transformation strategy of the European Patent Office. Said rule was originated as a way to minimise the negative effects that could be caused by postal mail delays or losses. In 2023 there are very few romantics who still send and receive letters and most communications are done electronically. Within this context, the EPO is determined to catch up by shifting its focus from paper to the digital world.
When will the ten-day rule be abolished and what are the consequences?
The new EPC Rules 126.2, 127.2 and 131.2 regarding notifications and the calculation of deadlines will enter into force on 1 November 2023. All the details about it can be found in the Updated Guidelines for Examination for 2023. For example, in section E, chapter 2, point 2.3.
In summary, the deadlines will be simplified, and the corresponding document will be considered delivered to the recipient on the date indicated. This will also determine the expiration of the applicable deadline.
The figure below shows a graphic example of how the “ten-day rule” applies until 31 October 2023:
and how expiration will be simplified as of 1 November 2023:
What happens if the notification arrives later than indicated?
If due to some digital mystery the corresponding document is delivered more than seven days after the date it bears, do not panic! It is possible to extend the deadlines by the number of days exceeding the aforementioned seven days. Furthermore, if this happens, it is the EPO that must prove when the communication had reached its destination.
For those who are interested, all the details can be found, in addition to the Examination Guides mentioned above, in the decision of the Administrative Council of 13 October 2022: OJ EPO 2022, A101, and in the EPO notification dated 25 November 2022: OJ EPO 2022, A114).
Those who are preparing the EQE 2024 exams (Pre-Exam & Main Exam) please notice that the EQE Supervisory Board has announced that either the ten-day rule – still in force on 31 Oct 23 or the new one (no 10-day rule – in force on 1 Nov 23) can be applied in their answers.
As always, here at ABG Intellectual Property we are ready so that no deadlines are missed.