As of November 2023, the 10-day rule will be history. Instead of adding ten days to the start of a period triggered by a notification from the EPO, the date which the document bears will count directly.
While the changes are supposed to support digitalisation, they will equally require adaptation of long-lived electronic notification practice in EP patent proceedings. And the amended rules are closer but not exactly in line with corresponding PCT provisions.
According to the changes coming into force in about one year on 1 Nov 2023, amended Rule 131(2) refers to the deemed notification rather than the actual one as start of the time limit:
Amended Rule 131 EPC – Calculation of periods (marked-up changes)
(2) Computation shall start on the day following the day on which the relevant event occurred, the event being either a procedural step or the expiry of another period. Where the procedural step is a notification, the relevant event shall be the deemed receipt of the document notified, unless otherwise provided.
As the main change, both Rule 126(2) EPC for postal services and Rule 127(2) for electronic communication are adopted in same manner to Rule 80.6 PCT as indicated below:
Amended Rule 126 EPC – Notification by postal services (marked-up changes)
(2) Where notification is effected in accordance with paragraph 1, the
letterdocument shall be deemed to be delivered to the addressee on the tenth day following its handover to the postal service providerdate it bears, unless it has failed to reach the addressee or has reached him at a later date; in. In the event of any dispute concerning the delivery of the document, it shall be incumbent on the European Patent Office to establish that the letterdocument has reached its destination orand to establish the date on which the letterdocument was delivered to the addressee , as the case may be. If the European Patent Office establishes that the document was delivered to the addressee more than seven days after the date it bears, a period for which the deemed receipt of that document is the relevant event under Rule 131, paragraph 2, shall expire later by the number of days by which the seven days were exceeded.
Amended Rule 127 EPC – Notification by means of electronic communication (marked-up changes)
(2) Where notification is effected by means of electronic communication, the electronic document shall be deemed to be delivered to the addressee on the
tenth day following its transmissiondate it bears, unless it has failed to reach its destination or has reached its destination at a later date; in. In the event of any dispute concerning the delivery of the electronic document, it shall be incumbent on the European Patent Office to establish that the electronic document has reached its destination or to establish the date on which it reached its destination , as the case may be. If the European Patent Office establishes that the electronic document was delivered to the addressee more than seven days after the date it bears, a period for which the deemed receipt of that document is the relevant event under Rule 131, paragraph 2, shall expire later by the number of days by which the seven days were exceeded.
So, the legal fiction that a document is deemed to be notified 10 days after the date it bears and the thereby delayed start of a time limit initiated by the notification will be replaced by simply using the date on the document as deemed notification and start for calculation. Only if receipt occurs later than 7 days after that date, the period is extended at its end (rather than the beginning) by the amount of days exceeding 7, corresponding to Rule 80.6 PCT.
Roughly summarizing the preparatory document for the decision (CA/30/22 Rev. 2), this shall remove an outdated complicated provision, improve harmonization with the PCT, and support digital transformation.
Of course, the original background of the 10-day rule to estimate postal delivery times by a default to avoid establishing the date of notification in large numbers of cases is no longer in line with meanwhile much quicker postal services and increasingly established same-day electronic notification via EPO mailboxes. It is also correct that the new rules will be simpler for new users of the system.
As a fan of digitalisation projects which provide benefits without introducing drawbacks, however, the support of digitalization is more difficult to see from the user perspective. If the rule changes shall create an additional incentive for use of electronic notification, it should be remembered that it is already part of unchanged Rules 126 and 127 for many years that post users have a slight time disadvantage compared to EPO mailbox users in that they normally received a document a few days later, while both have the same start of a period. This difference will be preserved in the amended rules by removing the additional 10 days for both. I have some doubts that the future slightly shorter overall periods will convince those to switch to mailbox usage who did not do so before.
More important than the total amount of available time is usually the handling of due dates at the end of a period. In this respect, however, the amendment questions established and safe procedures for numerous existing digital practitioners as well. It is quite common to inaccurately note and report time limits already leaving out the 10 days and rather start from the date on the document. In such system, the 10 days serve as additional safety period when reaching said inaccurately estimated due date. No matter how early a representative drafts a response to the EPO, a normal attorney-client relationship requires to wait for confirmation or other instructions from the client, which may come as late as the last day of a given period and possibly includes ambiguity. So, the grace period widely used for this will now be removed for digital mailbox users in same manner as for analogue post users. To retain same safety as before, both practices would need to be adopted by noting an additional pre- due date and possibly sending further reminders. Hence, the amendment will come with costs of changing processes and docketing software and it will probably lead to more missed time limits or extensions of periods. The preparatory document seems silent about which practical digitalization problem is intended to be solved by the rule changes.
Regarding harmonization of law, the respective PCT provision reads:
Unchanged Rule 80.6 PCT – Date of Documents (emphasis added)
Where a period starts on the day of the date of a document or letter emanating from a national Office or intergovernmental organization, any interested party may prove that the said document or letter was mailed on a day later than the date it bears, in which case the date of actual mailing shall, for the purposes of computing the period, be considered to be the date on which the period starts. Irrespective of the date on which such a document or letter was mailed, if the applicant offers to the national Office or intergovernmental organization evidence which satisfies the national Office or intergovernmental organization that the document or letter was received more than seven days after the date it bears, the national Office or intergovernmental organization shall treat the period starting from the date of the document or letter as expiring later by an additional number of days which is equal to the number of days which the document or letter was received later than seven days after the date it bears.
In CA/30/22 Rev. 2, it is emphasized that new Rules 126 and 127 differ from Rule 80.6 PCT in a more generous fail-safe provision. Namely, in case of disputed delivery, the burden of proof for delivery of a document and establishment of the actual notification date is on the EPO’s side. Users will widely welcome that the current practice is not going to be changed in this respect.
There is also a less generous difference in the legal text which is not made so prominent in said preparatory document. Present Rule 127(2) refers to the date of the transmission, which is deemed to have occurred on the date of the document, provided the document has been made available in the Mailbox by that date (OJ 2015, A28, Art. 9(4)). In amended Rule 127(2), the deemed notification will always be the date on the document, even if it is sent later. In the PCT, a demonstrated late mailing date, such as a mailbox entry after the date which the document bears, would replace the start of the period. In the vast majority of cases, documents are delivered to the mailbox on or even slightly before the date on the document. However, I recall at least one case last month where an EPO communication was placed in our firms EPO mailbox two days later than the document was dated. Although rare, such errors of the EPO do occur and seem no longer foreseen by the new provisions. It is not immediately apparent why there was a need for the incomplete harmonization with Rule 80.6 PCT in this respect.
New Rules 126, 127 and 131 shall apply to documents to be notified by the European Patent Office on or after 1 November 2023.
For EQE candidates, the changes are not relevant in EQE 2023 and, according to the present cut-off rule for the EQE syllabus (31 October of the year before the exam), the old provisions would even apply in EQE 2024. However, the EPO Guidelines available during such exam might be the ones where the 10-day rule is removed. At the annual meeting with the EQE committees earlier this month, it was indicated that a clarifying announcement is planned to come in due course.
Additional changes to Rules 46, 49, 50, 57, 65, 82 as of 1 Feb 2023 according to CA/D 10/22 encompass reductions of format requirements to application documents and online-only availability of documents cited in search reports. They will be reported separately on this blog when more clarifying decisions of the President are published, and will be considered in the next update of EPC.App coming in April 2023.