On 14 October 2022, the European Patent Office (EPO) announced the upcoming end of the so-called "Ten-Day Rule" for calculating deadlines triggered by EPO notifications such as office actions.

Details were sparse, and it is still not clear what transitional provisions will be put in place. This is undeniably a major change in EPO practice, and applicants and other users of the European patent system are understandably curious as to what this means to them.

In this guide, we answer some frequently asked questions around this change, updated as we learn more.

FREQUENTLY ASKED QUESTIONS

  • What is/was the "Ten-Day Rule"?
    Many deadlines at the EPO are calculated from receipt of a relevant notification issued by the office (e.g. in the case of examination reports and other "office actions"). However, instead of tracking actual receipt dates, all notifications were deemed received ten days after the mailing date printed on the letter (Rules 126(2) and 127(2) EPC). This legal fiction provided certainty, and more than compensated for normal delays in receiving documents by post. For users, who nowadays usually receive notification instantaneously through electronic means on the day of issuance, this had the practical effect of extending the "deadline" by ten days (e.g. such that a four month deadline expired after ten days plus four months). Users sometimes referred to these extra days as the "grace period".
  • Why is the "Ten-Day Rule" being abolished?
    The notification period has become a source of confusion, especially to non-attorneys and practitioners outside of Europe. Its interaction with months having different numbers of days and with EPO closures can be opaque, even for qualified European patent attorneys. Moreover, the Ten-Day Rule does not apply to all EPO deadlines - for example, the opposition period, or any deadlines before the EPO in its capacity as a receiving office (rO), International Searching Authority (ISA), or International Preliminary Examining Authority (IPEA) under the Patent Cooperation Treaty (PCT) - and the resulting deadlines can be difficult to calculate and docket. As the majority of notifications are now received electronically, the legal fiction that it may take several days for them to arrive is increasingly irrelevant. The abolition of the rule is intended to simplify the calculation of EPO deadlines, and bring them into line with the PCT as well as most other patent offices. A new rule is being put in its place to safeguard against delays in receipt of mail from the EPO. Under the new rules, if a notification is contested and the EPO cannot show that a document reached the addressee within seven days of the date it bears, any period triggered by the deemed receipt of that document will be extended by the number of days by which these seven days are exceeded.
  • When is the "Ten-Day Rule" being abolished?
    The change comes into effect on 1 November 2023. This means that the Ten-Day Rule will not apply to new deadlines set by a notification issued on or after this date. Put differently, the "grace period" will no longer be available. For example, an examination report issued on 2 November 2023 and setting a 4-month deadline for response will expire on 2 March 2024.
  • What are the consequences of this change?
    This change effectively means many new deadlines will be ten days "shorter" than previously. As a result, we might expect more deadlines to be missed by unprepared applicants around the time the rule change takes effect. Whilst most of the affected deadlines are four months or more, the effect of this change will feel more severe for shorter deadlines. Although there are a few one-month deadlines, these are mostly for straightforward procedural acts (e.g. providing details of a biological deposit). In most cases, if the deadline is miscalculated and missed, further processing is still available as a remedy.
  • Does this change affect the further processing deadline?
    Yes. The deadline for requesting further processing is two months from notification of the loss of rights letter. This means that, from 1 November, this deadline is notably shorter. As further processing is a common remedy when deadlines are missed, there is the potential for mistakes in docketing to rapidly snowball. Now more than ever, it is important to note the further processing deadline carefully, as few further remedies are available.
  • What do I need to do to prepare for this change?
    All users should review their systems to confirm that they record the correct deadlines as sent by their attorneys, and send instructions ahead of the deadline in good time. This is always true but, in light of the change, those who frequently rely on the "grace period" to file responses after the deadline reported by their attorneys, or who routinely add ten days to the reported deadline when entering it in their docketing system, should pay particular attention from 1 November 2023 to ensure that no deadlines are missed. For many users, little is required - your attorney will report the deadline under the new rules, as normal. Provided you send instructions in good time, no issues should arise.
  • Will I still be able to use the ten day "grace period" for new deadlines after 1 November 2023 if I receive notification by mail?
     No. For all deadlines set by a notification issued on or after 1 November 2023, the Ten-Day Rule will not apply, regardless of whether the notification is received electronically or on paper.
  • I have an outstanding deadline for response to an office action issued before 1 November 2023, which expires after the rule change. Does the Ten-Day Rule apply?
    Yes. The change only affects deadlines set by notifications issued on or after 1 November 2023. Therefore, deadlines derived from letters sent before, but expiring after, this date are unaffected, and the Ten-Day Rule still applies.
  • Will I lose the ability to rely on the Ten-Day Rule if I extend a deadline?
     No. If the Ten-Day rule applies to a deadline, it continues to apply if the deadline is extended even if the extended deadline falls on or after 1 November 2023.
  • My office action arrived late, and I need more time to respond. Are there any safeguards in place?
     Yes. Thanks to the new rules that come into effect on 1 November 2023, if a document is received more than 7 days after the date appearing on the letter, then the deadline will be extended accordingly. For example, where a document is received twelve days after the date it bears, the deadline would be extended by five days (i.e. twelve minus seven). How this interacts with office closed days (see below) is still unclear. However, as virtually all communications are sent electronically nowadays, we expect that these safeguards will rarely be invoked. Extensions may also be possible in the event of a "general dislocation" in the delivery of mail (such as following a postal strike, or as were declared in the early months the coronavirus pandemic), or due to outages in the document filing software on the EPO's website. These are rare events, and your European Patent Attorney will be able to advise if you believe you have been affected by them. Finally, many deadlines may be extended either as-of-right or through further processing, if additional time is needed. However, any as-of-right extensions must be requested within the response period originally set by the EPO taking account of the new rules.
  • My deadline expires on a weekend. When is the last day I can file a response?
     The rules concerning "rollover" of deadlines falling on weekends or public holidays when the EPO is closed remain unchanged (Rule 134(1) EPC). Therefore, when a deadline falls on a day on which one of the EPO's offices is closed, it may be filed the next working day.
  • Are there any other "grace periods" or extensions available at the EPO?
    Yes. Many deadlines at the EPO may be extended in advance and on request, and further processing remains available as a "standard" remedy for (most) missed deadlines at the EPO. Your European Patent Attorney will be able to advise when this is possible.
  • What deadlines are affected?
    Common examples of deadlines to which the Ten-Day Rule will no longer apply include those for:
    • Entry into the European Regional Phase (from a PCT)
    • Responding to search or examination reports.
    • Amending claims ahead of search ("Rule 161").
    • Responding to an intention to grant.
    • Filing an appeal.
    • Responding to the Opposition Division (OD) or Board in opposition and appeal.
    • Requesting further processing.

    Please note that this is not a complete list.

    New deadlines of these types will all be effectively 10 days shorter, starting 1 November 2023.

    Meanwhile, those unaffected by the change, and to which the Ten-Day Rule did not apply in the first place, include the deadlines for:

    • Filing an application claiming priority to an earlier application.
    • Filing translations of applications not filed in an EPO language.
    • Payment of filing, search, examination, and designation fees.
    • Payment of renewal fees.
    • Filing an opposition.
    • All deadlines set by the EPO in its capacity as an rO, ISA, or IPEA under the PCT.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.