http://ipkitten.blogspot.com/2022/10/its-official-epo-confirms-10-day-rule.html
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)
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