Beginning November 1, 2023, notices from the European Patent Office (EPO) will have a response period that is computed from the date noted on the communication. This represents a change in EPO procedures. Currently, EPO communications are deemed to be received by the addressee 10 days after the date marked on the communication, providing for an additional 10 days to respond to such communication.

What Is the “10-Day Rule”?

The 10-day rule sets the date on which a communication from the EPO is deemed to be received by the addressee as 10 days after the date marked on the communication. As such, the response period begins 10 days after the date marked on the communication. As an example, a communication bearing a date of October 10, 2023, with a three-month deadline for responding to the communication would be due October 10, 2023, plus 10 days plus three months (January 20, 2024). This due date is in view of the legal fiction that the addressee received the communication on October 20th and not October 10th, the date noted on the communication.

The 10-day rule originated as a way to minimize the negative effects that could be caused by postal mail delays or losses when transporting communications sent by the EPO. However, the EPO now uses the electronic EPO Mailbox to issue the vast majority of communications. Therefore, the rationale for the 10-day rule has become increasingly suspect over time. Unsurprisingly, the 10-day rule is being eliminated as part of a digital transformation strategy of the EPO with the aim of creating uniformity with the rest of the world.

Elimination of the 10-Day Rule

With the elimination of the 10-day rule, EPO communications dated on or after November 1, 2023, will be deemed delivered on the date it bears regardless of whether the communication is sent electronically or by post. As an example, a communication bearing a date of November 10, 2023, with a three-month deadline for responding to the communication will have a due date of November 10, 2023, plus three months (February 10, 2024).

Because the 10-day rule is being eliminated on October 31, 2023, if the date on the communication is earlier than November 1, 2023, the 10-day rule will remain applicable and the communication will be deemed delivered 10 days after the date marked on the communication, with any deadlines calculated therefrom (even if the deadline is November 1, 2023, or later). 

The elimination of the 10-day rule will effectively shorten periods for response by 10 days. For lengthy response periods, for example six months, the effect of this change may be minimal. However, for shorter response periods, for example two months, this change may significantly impact reporting and response timelines. Thus, applicants are encouraged to provide instructions earlier to ensure that they are carried out in a timely manner.

Importantly, where issues arise regarding delivery of EPO communications, avenues remain for addressees to contest delivery.

Contesting Receipt of Communications from the EPO

Where an addressee disputes the delivery of a communication from the EPO, the EPO has the obligation to prove that the communication was delivered and the date of its delivery. If the EPO is unable to prove delivery of the communication, the communication will be reissued with a new date and any deadline set by the new communication is deemed to begin on the new date. With regard to the communication not delivered, any deadlines set by the date of the undelivered communication is deemed not to have commenced.

If the communication is delivered, even with the elimination of the 10-day rule, the delivery date may influence the response deadline in view of the new 7-day rule.

The “7-Day Rule”

While the EPO is eliminating the 10-day rule, a new 7-day rule was created. If an addressee alleges that an EPO communication was received after the date printed on the communication, it is relevant how many days have elapsed between the date marked on the communication and the actual delivery date.

If the communication was delivered within seven days of the date marked on the communication, no adjustment is made and any period for response set by the communication starts on the date noted on the communication. However, if the EPO establishes that the communication was delivered more than seven days after the date it bears, any deadline set by the communication will be extended by the number of days difference between the actual delivery date and the date on the communication, minus seven days. This establishes the new 7-day rule. As an example, if the addressee receives a communication 16 days after the date marked on the document, the period for response will be extended by nine days.

As patent offices worldwide continue to modernize and change previously established rules, we will continue to monitor and provide updates accordingly.

For More Information

For questions regarding patent strategies, please contact any member of Wilson Sonsini's patents and innovations practice.