Just over a week ago, IP social media was set alight with reports that the EPO Administrative Council (AC) was planning to abolish the 10-day notification rule (IPKat). The EPO itself maintained silence for a week until finally confirming in a press release last week that the 10 day rule will cease to be in effect on 1 November 2023.
The EPO "10 day rule" is currently provided by Rules 126(2), Rule 127(2) and 131(2) EPC. The Rules stipulate that notification from the EPO is considered to occur 10 days after the date on which the notification was sent. If the deadline for responding to a notification is 2 months, for example, then the deadline is calculated as 2 months from 10 days after the date the notification was sent.
The EPO press release on the removal of the 10 day rule also reports on a number of other measures aimed at "fostering the ongoing digitalisation processes in the EPO's patent grant procedure". Other such "digitalisation processes" that EPO management have recently introduced (or forced on applicants, depending on your viewpoint), include the switch to ViCo oral proceedings for the majority of examining divisional oral proceedings.
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None patent attorneys may be bemused at the excitement surrounding the AC's decision to abolish the 10 day rule. Many patent attorneys, this Kat included, may feel a certain nostalgic fondness for the rule. Correctly calculating the 10 day rule is, after all, one of the first things a trainee patent attorney will learn.
The 10 rule is also a peculiarity of the European patent system that gives EPO deadline reporting a certain mystic. Sometimes the rule applies, sometimes it does not, but only your European patent attorney can tell you when the deadline actually is.
A consequent disadvantage of the 10 day rule is thus the uncertainty it can give rise to when EPO deadlines are reported to IP attorneys outside of Europe. These attorneys may, for example, assume a 10 day "grace period" on EPO deadlines, even when the 10 day rule might not actually apply, potentially putting in jeopardy a timely response to the deadline. Going forward, reporting deadlines and chasing instructions from attorneys outside of Europe will be simpler and free from the risk of incorrect assumptions about the applicability or not of an anachronous 10 day extension for slow post.
However, as with most changes at the EPO, it seems that there is far from universal support for the removal of the 10 day rule, or for the way in which the AC is enacting the removal. Critics of the change argue that some deadlines (e.g. 1 month deadlines) to which the 10 day applies will now be too short, especially when instructions from foreign clients are needed. Removal of the 10 day rule may therefore lead to increased request for extensions in the form of further processing, which will incur the cost of further processing fees. However, given that the 10 day rule is based on the legal fiction that it may take days for a notification from the EPO to reach its recipient, it is difficult to sustain justification for the rule in an era of digital communication.
The EPO press release indicates that further details of the changes to the rules will follow in upcoming issues of the Official Journal, and as updates in the 2023 Guidelines for Examination.
Further reading
BREAKING: EPO to abolish the 10 day rule (14 Oct 2022)
Reviewed by Rose Hughes
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Monday, October 24, 2022
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"Sometimes the rule applies, sometimes it does not"
ReplyDeleteDisagree with this. The author will be aware that the rule concerns all notifications so affects all periods whose start and end is set by a notification, but does not affect deadlines which are specified by the patent office or based on some other trigger or condition. The rule always applies, it just does not affect everything.
Pedantic semantics? Guilty, this is a patent attorney's blog after all.
Dear Anon - Thank you for your comment. You are of course correct that the rule always applies to notifications. The offending sentence was used as a rhetorically device, viewing the 10 day rule from the perspective of a client or non-EP attorney, i.e. someone who does not know (or care?) about the nuances of whether a deadline has arisen as the result of a EPO notification or another event.
ReplyDeleteAlso, I am not entirely convinced your criticism is justified. I think it is legitimate to state that the 10 day rule does not "apply" to deadlines that are not dependent on a notification. Therefore in some cases the rule applies, and in some cases it does not.
Nonetheless, I did have an internal debate as to whether to include the sentence or not, so I understand and take your point.
According to the EPO announcement, it seems that, under the amended rules, a notification sent by post can arrive up to 7 days after the date of the notification without affecting the response deadline.
ReplyDeleteThat seems a bit harsh for the recipients of postal notifications. But perhaps this is just the EPO's way of "strong-arming" all users into accepting notification by electronic means instead.
It is difficult to imagine any reason why a representative would wish to receive a paper notification. For an inventor applicant with no representation, expecting them to set up a mailbox would be unreasonable.
DeleteThe digitalisation of the EPO is progressing.
ReplyDeleteWe just have to wait until formalities officers and examiners can be replaced by AI!
Then it will be prefect: money will flow for the management and the contracting states, without having to be bothered by staff who is constantly complaining.
Surely you are not suggesting that the prime motivation for the rule change could have been making it easier for the EPO to automate the docketing of deadlines? I am shocked, shocked I tell you at the suggestion that, instead of putting the interests of its users ahead of everything else, the EPO could possibly take actions that are purely motivated by a desire to fill the pockets of the management and the member states.
DeleteProof, to tell the truth, I am shocked, shocked, that you are so shocked. The EPO is now run by managers steeped in the art of management. That means doing what managers do in the corporate world. Under the law, a joint stock limited liability company has a duty to maximise shareholder value but no duty at all to its employees, its suppliers or its customers.
DeleteSo of course, it is a "no brainer" that current EPO management treats the organisation like a cash cow, to deliver nothing else but ever-increasing dividends to its owners, its shareholders, the AC members, the Member States. Anybody (employee, supplier, customer) who doesn't like it is free to leave. What a way to run a public service, eh? Next public service up, for "reform", will be I suppose public broadcasting services so we get radio and TV like in the USA. No thanks.
Max, perhaps I should make the tongue in my cheek more visible the next time.
DeleteI wonder why the 10-day delay affected Rule 127 (electronic communication) in the first place. The fact that electronic communication is more or less immediate is not a very new development resulting from digitization. And now I wonder why Rule 126 (snail mail) is affected by the change: have mail services of EPC countries recently improved because of computers and stuff??
ReplyDeleteI mean I do see the advantage of having a single rule instead of multiple ones. But it seems to me that the rationale for the 10-day rule still applies for current postal notifications, which is a mode of communication that the EPO still uses.
Delete