The Chartered Institute of Patent Attorneys (CIPA) is reporting that the EPO Administrative Council (AC) has decided to abolish the 10 day rule.
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CIPA reported today that on 13 October 2022, the Administrative Council (AC) of the EPO passed a package of rule changes intended to "adapt the rules of the EPC to the digital age". Apparently, included in this package was a change to Rule 126(2) EPC, and particularly the removal of the 10-day rule. The change will mean that notification will in the future be considered to occur on the day that the document is sent by the EPO, given that this is generally the case for documents that are delivered electronically.
According to CIPA, the new rule will include a safeguard for cases in which a document is not delivered on the same day. If a recipient alleges that a document was not delivered on time, it will be up to the EPO to prove that it was delivered on time.
CIPA also reports that the new rule will not come into force until 1st November 2023.
Removing the 10-day rule will simplify calculation of EPO deadlines, but lessen the time applicants will have to respond to notifications. The shift also reflects the widespread move of patent attorney firms in recent years to a digital as opposed to paper based document management system.
IPKat awaits official confirmation of the change from the EPO itself. Stay tuned!
Reviewed by Rose Hughes
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Friday, October 14, 2022
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Posts
"adapt the rules of the EPC to the digital age"
ReplyDeleteThe inevitable squirt of management speak... But what is the REAL justification?
With the looming energy shortages, and non-zero probability of extension of the conflict, I would wait a little bit before proclaiming the inevitability of the "digital age".
The German delegation was the only one to oppose the amendment. epi argued in vain that the amended rule regarding postal notification would not be compatible with the EPC (see Article 164(2) EPC).
ReplyDeleteInteresting that the information seems to have been announced by CIPA (and also now by EPI) before the EPO troubled itself to do the courtesy of issuing any kind of official statement - as of tonight we still seem to be awaiting the customary AC communiqué.
ReplyDeleteThe 10-day rule formed the foundation for learning the EPC rules. I fear for the future!
ReplyDeleteThe alleged reason was "digital transformation" [EPO computers can't count to 10?] and to align with PCT rules [to make it easier for the poor users who seem to have no difficulty with the rule?].
ReplyDeleteIn short, there was no good reason, so what was the real reason?
The "real reason" is that the factual rationale for the legal fiction of deemed notification has evaporated. At its foundation, the EPO had to contend with delivering to applicants in seven European countries using their national postal services, and was intent on expanding to further countries. The EPO introduced the exceptional 10 day rule so that applicants would be provided with sufficient time to respond to communications, wherever they lived, without the EPO having to bother with the issue of how long postal services actually take in a given country. Now, the vast majority of communications are delivered digitally and instantaneously. So why maintain the fiction?
ReplyDeleteWhether they have it or not it does not matter. It made sense to introduce the rule in the past. It would not make sense to introduce the rule now. The only rationale for keeping it is that there is no point in changing it. However, it is good legislative house-keeping to discard rules that no longer serve their initial, or indeed any useful, purpose.
Most importantly, this is a complete non-issue for applicants, who really do not care. That it gets attorneys riled up only goes to show the disconnect between the interests of applicants, who care primarily about cost and reliability, and of attorneys, who can get themselves in a tizz over just about anything.
I'm an attorney. I really don't care about the rule change. The rationale for the rule is no longer valid and it belongs to an era when everything was done very differently to today.
DeleteIt will have the effect of shortening most EPO deadlines by 10 days, but c'est la vie.
An upside to this is that we may encounter less confusion from the non-EP attorneys that we work with, who can sometimes get confused - assuming that the 10 day period applies where it doesn't, or that it's a "grace period", or miscalculating it, and generally using it as a reason to send instructions later than ideal.
The downside to the upside is overseas attorneys who know EP attorneys didnt let on about the extra 10 days and gave late instructions knowing there was a cushion. Now they won't know the cushion has gone and will instruct too late for action.
DeleteI like the argument about housekeeping.
DeleteLet's think about the priority right. Does it still serve its original purpose ? Does it still make sense to have a 12 months period in the "digital age" ?
This way of thinking may open the Pandora box...
I'm all in favour of what another commenter calls "good legislative house-keeping" and it is clear that the reason for creating the ten day rule back in the 1970's no longer has any relevance. I would encourage the EPO to continue with its house-keeping initiatives, giving attention, in particular, to proportionate consequences of missing a due date so that there is a "Drop Dead" moment only when it is fair.
ReplyDeleteWho else recalls (retired judge) Robin Jacob declare that he would be very uneasy about a career as a patent attorney in private practice, precisely because of the awesome consequences that can happen when one misses just one official due date on an already pending patent application. The cases on Art 122 EPC sometimes make gruesome reading.
There is ample time to alert clients and associates to the demise of the 10 day mailing cushion. But in reality how many of them (especially those working with an EPA who "didn't let on" about the 10 day Rule) will retain in their mind a vague career-long memory that their EPO representative always manages to find a way to file timely, however late the instructions to him or her are despatched? Talk about a "trap for the unwary" eh?
Why has the EPO still not published anything about this?
ReplyDeleteThe cynic in me thinks the EPO will be banking on a few more further processing fees...
ReplyDeleteAs an overseas attorney I often find myself providing EP instructions later than one would want (for a variety of reasons). Unfortunately I expect that will continue after the demise of the 10-day "buffer".
Fingers cross the CNIPA don't follow suit!