The “10-day rule”, well known to all those who follow proceedings before the EPO, will soon disappear

The current Rule 126 EPC states in its first two paragraphs:

(1) All notifications by postal services shall be by registered letter.

(2) Where notification is effected in accordance with paragraph 1, the letter shall be deemed to be delivered to the addressee on the tenth day following its handover to the postal service provider, unless it has failed to reach the addressee or has reached him at a later date; in the event of any dispute, it shall be incumbent on the European Patent Office to establish that the letter has reached its destination or to establish the date on which the letter was delivered to the addressee, as the case may be.

This rule creates a legal fiction which postpones by 10 days the date on which the EPO’s notifications are deemed to have been received by the addressee. The starting point of the so-called “periods to be specified”, which begin to run from this receipt, is shifted accordingly. Users of the EPO patent system are accustomed to this rule, and many of them have taken advantage of the “additional” time provided by this rule to respond to communications from the EPO.

This rule will be repealed as of 1 November 2023. Letters sent by the EPO to applicants and their representatives will then be deemed to have been notified and therefore received on the date they bear, and the periods associated with these letters will consequently be shorter.

In case of dispute by the addressee as to the real date of reception of such a letter – that is, when the addressee claims to have received the letter at a different date than the date it bears – the burden of proving this date will still lie with the EPO.

Indeed, this effective date of receipt will be of particular importance: a new legal fiction, less advantageous for applicants than the 10-day rule, will come into force, according to which when a communication issued by the EPO takes more than 7 days to be forwarded, the periods running from its reception will be extended by the number of days of forwarding minus seven. Unlike the 10-day rule, which shifts the starting point of the relevant periods, this new rule postpones their end date. Some of the EPO’s interlocutors are already familiar with such a rule, which exists in the context of international applications under the PCT (Rule 80.6 PCT).

In other words, the starting point for the relevant period will always be the date shown on the communication, and the following three cases may apply:

1. When the actual date of receipt of the communication by the addressee is indeed the date it bears – which should be virtually systematic for notifications made by electronic means – the associated period for responding will not be subject to any postponement.
2. When the actual date of receipt is 7 days or less after the date shown on the notification, the associated period for responding will not be postponed either. In practice, therefore, the addressee will have a few days less to respond to the notification than the specified period.
3. When the actual date of receipt is more than 7 days after the date shown on the communication, the associated period will be postponed. To calculate this postponement, one must calculate the difference between the actual date of receipt and the date shown on the communication, then subtract 7 days from this difference.

Let us take a concrete example: the EPO issues a notification under Article 94(3) EPC on 8 November 2023, and specifies that the applicant has four months to respond.

1. If the applicant indeed receives this communication on 8 November 2023, no extension of the specified period is granted, and the applicant must respond at the latest by 8 March 2024.

2. If the applicant receives this communication on 13 November 2023, only five days were necessary for the communication to be forwarded. No extension of the specified period is granted, and the applicant must also respond by 8 March 2024. He therefore has five days less than the specified period to respond.

3. If the applicant receives this communication on 20 November 2023, twelve days were necessary for it to be forwarded, such that an extension of the specified period of 12-7 = 5 days is granted. The period therefore expires on 13 March 2024. If the EPO wishes to dispute that more than 7 days have elapsed between the real reception date and the date borne by the notification, the burden of proof lies with the Office.

It is worth remembering that the raison d’être of the 10-day rule, which was introduced into the EPC Implementing Regulation at a time when notifications were systematically effected by post, was to enable applicants based in Member States located far away from the EPO’s offices, and to which mail could take several days or even weeks to be forwarded, to benefit from a reasonably long response time to the Office’s notifications.

However, the EPO has expressed its intention to promote the digital transition of the European patent granting procedure. Indeed, the Office wishes to favour notification by electronic means, allowing notifications to be delivered on the day of sending, rather than in paper format. Today, most communications emitted by the EPO are already sent electronically, although some are still sent by post, such as communications to addressees who have not requested access to electronic means of communication with the Office (Mailbox, MyEPO Portfolio…).

One advantage of this rule change is that it will make it easier to calculate specified periods, especially for applicants and IP professionals based outside Europe, who are less familiar with the rule than their European counterparts.