“10 day rule” at European Patent Office to end

As first announced in October last year, the European Patent Office (EPO) is abolishing the ’10-day rule’ on 01 November 2023. As such, the final deadline for responding to a communication issued by the EPO and notified by post will change.

What is the 10-day rule?

Where the EPO sets a deadline in a communication delivered by post, the deadline for response is calculated from the date the communication is deemed to be received. Until now, to account for potential postage delays, a communication issued by the EPO was considered to have been delivered ten days after the date on which it was sent. As such, a communication sent on 05 September 2023 would have been deemed to have been received on 15 September 2023, with the deadline for response running from that date.

What replaces the 10-day rule?

Today, very few communications issued by the EPO are delivered by post. Instead, most communications are delivered by electronic services such as the EPO Mailbox. With these electronic services, the possibility of a postage delay is eliminated. After this change in procedure at the EPO, the date of receipt of an issued communication will be the date the communication was sent. As such, a communication sent on 15 November 2023 will be deemed to have been received immediately, with the deadline for response running from the same day.

When will the rule change come into effect?

This rule change comes into effect at the EPO on 01 November 2023. As such, whilst the 10-day rule will still apply to communications notified on 31 October 2023 or earlier, the 10-day rule will no longer apply after this date.

In addition to this change, the EPO’s existing rules around the late receipt or non-delivery of the few communications still issued by post are being modified to allow deadlines to be calculated from the date of actual receipt if this is more than seven days after the date of the communication.

The benefits

First and foremost, these rule changes reduce the complexity around the actual deadline for responding to communications at the EPO. Another advantage of the change is to remove the difference between deadlines set by communications and those set by other actions, such as publication.

Additionally, this rule change reflects how law firms work before the EPO, with communications routinely passing between the EPO and patent attorneys electronically rather than by the postal service, increasing efficiency and simplifying the application process for all parties.

The disadvantages

The main disadvantage is that there is effectively 10 days less to respond to EPO communications notified by post. Whilst this may not have a big impact on long deadlines, it could have quite a considerable effect on shorter turnaround times.

What to do now?

My primary advice would be to ensure that your European representatives are reporting communications issued to you in a timely manner, to ensure that you have adequate time to work together to develop a response within the shortened deadline period.

If your current attorney is not quite hitting the mark, speak to Murgitroyd. As one of the leading and largest IP firms in Europe, we have a full-service offering, encompassing pre-filing, prosecution, renewals, and portfolio management, and would welcome the chance to work with you.