Deemed date of receipt looses 10 days per 1 November 2023: shortens times to respond to communications!
10 days
A news message on the epi website indicates that the Administrative Council of the EPOrg decided to amen to Rule 126(2) EPC relating to the date on which a document sent by the EPO is deemed to be delivered. Currently, a documnt is deemed delivered 10 days after the date on the document. This will changer per 1 November 2023: as of that date, the date on which the document is deemed to be delivered is the date on the document, similarly to PCT Rule 80.6, second part (with with some differences, in particular the EPO keeping the burden of proving the date of delivery in the event of dispute, whereas under PCT that burden is with the applicant).
I heard that, surprisingly, only one delegation voted against the change. Even though the entry into force of the amended Rule is about a year away, changing such a well-established rule that is know world-wide to the disadvantage and risk of the applicant may cause some accidents, which cannot in all cases be repaired: not knowing that the rule has changed will make a request for re-establishment of missing, for example, the appeal period, have hardly any chance of success.
Note that the change has no impact on the 9m opposition period (triggered by the mention of the grant in the bulletin), the 1m period for paying the filing and search fee (triggered by the filing), the 6m period to pay the examination fee and file the request for examination (triggered by the mention of the publication of the search report in the bulletin), the 31m period for EP entry (triggered by the earliest priority date), nor any other periods that are triggered by an event other than notification.
It does however affect all periods for responding to an invitation to remedy a formal deficiency (in most cases, 2m), an office action (usually 4m, sometimes 2m; extendible), a R.161/162 communication (6m), invitations to pay claims fees in case of non-unity (2m), the period for requesting further processing (2m), the appeal periods (2m for notice & fee, 4m for grounds), and all other periods that are triggered by the notification of letter/invitation/communication!
So, when, a communication is issued on 17 November 2023 under Rule 58 to file a missing translation:
- if the current Rule would still have applied, a response would need to be filed by
17/11/2023 + 10d + 2m -> 27/1/2024 (Saturday) [R.134(1)] -> 29/1/2024 (Mon);
- with the amended Rule however, a response is to be filed by
17/11/2023 + 2m -> 17/1/2024 (Wed)
The Administrative council documents are currently not yet available on the EPO website (here).
Update 21 November 2022: the Administrative council documents are now available on the EPO website:
- CA/D 10/22 Decision of the Administrative Council of 13 October 2022 amending Rules 46, 49, 50, 57, 65, 82, 126, 127 and 131 of the Implementing Regulations to the European Patent Convention; amended Rules 46, 49, 50, 57, 65, 82 in force as of 1.2.2023; amended Rules 126, 127 and 131 in force as of 1.11.2023;
- CA/30/22 Rev. 2 Legal changes to support digital transformation in the patent grant procedure (first basket): amendments to the EPC Implementing Regulations (Preparatory documents for the decision)
The epi news message is cited below (no changed made):
The ten day rule is living its last months
October 14, 2022
Yesterday, the Administrative Council of the EPOrg passed a package of rule changes requested by the EPO "to adapt the rules of the EPC to the digital age". Included in this package was a change to Rule 126(2) EPC relating to the date on which a document sent by the EPO is deemed to be delivered. This used to be 10 days from the date on the document. This has been changed so that the date on which the document is deemed to be delivered is the date on the document, with some safety nets copied from the PCT.
Amended Rule 126(2) shall read as follows:
(2) Where notification is effected in accordance with paragraph 1, the document shall be deemed to be delivered to the addressee on the date it bears, unless it has failed to reach the addressee. In the event of any dispute concerning the delivery of the document, it shall be incumbent on the European Patent Office to establish that the document has reached its destination and to establish the date on which the document was delivered to the addressee. If the European Patent Office establishes that the document was delivered to the addressee more than seven days after the date it bears, a period for which the deemed receipt of that document is the relevant event under Rule 131, paragraph 2, shall expire later by the number of days by which the seven days were exceeded.
There are therefore safeguards in the rule for the case where a document sent by registered post is not delivered within 7 days or not delivered at all. If a recipient indicates that a document was not delivered on time, it will be up to the EPO to prove when it was delivered.
The new rule does NOT come into force immediately. It will only come into force on 1st November 2023 . This gives all concerned just over a year to adapt their processes and update their computer systems to be in conformity with the amended rule. The EPO promised to institute a publicity campaign to assist in dealing with this rule change.
[end citation]
The EPO published a News Message on 21 October on the changes - https://www.epo.org/news-events/news/2022/20221021.html
ReplyDeleteThe message provides:
"Second package - entering into force on 1 November 2023
In alignment with the PCT a new fiction for notification and time limit calculation will apply as of 1 November 2023. The "10-day rule" will be abolished and documents will be deemed to be notified on the date they bear. Safeguards will be available in cases where a document is not received or received exceptionally late (more than 7 days after the date). In the event of a dispute concerning the delivery of a document the Office will retain the obligation to prove that the document was delivered and the date of its delivery. This change affects Rules 126(2), 127(2) and 131(2) EPC. Shifting the focus of the notification system from the paper to the digital world, where electronic documents are delivered on the same day, is key for the Office's digital transformation. Further details will be provided by an OJ Notice well in advance to entry into force of the amended Rules.
Users will be informed in more detail soon. Decision CA/D 10/22 of the Administrative Council will be published in the November edition of the Official Journal and will be available earlier on the EPO website. A corresponding Notice of the EPO as well as a Decision of the President of the EPO will be published in the December edition of the Official Journal. The Guidelines for Examination in the EPO 2023, entering into force on 1 March 2023, will reflect the relevant updates."
In my view, this new rule might detrimetally effect the quality of responses to Office Actions and reduce efficiency of procedure before the EPO. Why is that? Well, there are some clients or foreign colleagues who prefer submitting their instructions VERY close to the due date (which is often communicated without the 10-days rule). Regularly, the 10-days rule allows for sufficient time with the client or foreign colleague to discuss possible problems in her/his instruction (e.g. possible violations of Art. 123(2) EPC which the client or foreign colleague was not aware of). Abolishing the 10-days rule means shorting the time availaible for said discussion with the client. In extreme cases, instructions would have to be realized in a written submission to the EPO which are prone for an objection to be raised, just to meet the due date. Hence, in my opinion, in view of this possible drop in quality of written submissions, the decision to abolish the 10-days-rule might turn out to lengthen procedures before the EPO more than shortening them. Naturally, a way out could be to communicate a sooner due date to the client. However, this measure puts some (calculating) burden on the side of practicioners, which not all practicioners will be fond of and realize.
ReplyDeleteAFAIK the EPO does not communicate official communications by email (contrary to WIPO). So how are we supposed to have received something on the day it was sent by EPO?
ReplyDeletehttps://www.epo.org/applying/online-services/mailbox.html
Deletehttps://www.epo.org/applying/online-services/myepo.html
By the way, also registered surface mail is sometimes received on the day of the document or even one or two days before when you are at close postal distance to the EPO...
DeleteThe confusing bit is that r126(2) still refers to r126(1) which (only) mentions registered letters. The fact that a communication is ALSO, besides being underway by registered letter, available somewhere else (where you have to actively go and look for it!), does not make that the deemed date of receipt of the registered letter should change.
DeleteWhere else will it be? It is either Rule 126(2) or -if the party so requested- Rule 127(2).
DeleteSee CA/30/22 Rev. 2 item 84: "While the Office's proposals aim to promote the uptake of digital services and workflows, postal notification will remain fully available. Any switch to electronic notification will remain voluntary and subject to the express consent of the addressee.")
The section that you quote confirms that postal notification remains the standard. In such a case the reasoning, that deemed delivery of the postal notification is on the day it was sent (which is what new R126(2) states) BECAUSE there is also faster electronic notification available (without any obligation by the applicant to use it) does not make sense. It is illogical reasoning.
DeleteIt's like EPO is saying: ' You could have had it earlier if you really really really wanted to, and therefore the deemed delivery date of the paper notification method is changed'. The applicant should not be punished for not accepting a voluntary option but sticking to the default notification method.
To me that's equivalent to: You could have had the paper notification earlier if you had put your office in Munich instead of on the Outer Hebrides islands, so the Munich date is decisive.
CA/30/22 Rev. 2, item 22 (on Rules 46 and 49):
ReplyDeleteThe proposal does not contain changes to the requirements concerning the
presentation of documents and **the first decision of the President under the enabling clauses is foreseen to restate the current requirements**. Changes to the presentation requirements themselves will be made only after discussion at international level (in the PCT context), with contracting states and users. The procedure for that consultation is set out in more detail in the following paragraphs 23 and 24.
It is confusing that the example in item 72 in CA/30/22 Rev. 2 uses dates at which the amended Rules for notification do not yet apply (it uses an examination report under Article 94(3) EPC bearing a date of 10 March 2022). This may be due to a possible earlier intention to have the amendment enter into force already by 1 March 2022.
ReplyDeleteThe transition provisions in CA/D 10/22 provide: "Rules 126, 127 and 131 as amended by Article 1 of this decision shall apply to documents to be notified by the European Patent Office on or after 1 November 2023."
ReplyDeleteThis leaves me a bit puzzled:
A document dated 30.10.2022 would be deemed notified, according to current Rule 126(2), on 9.11.2023. But that is after 1 Nov 2023, so that the new Rules applies? But according to the new Rules, notification would be on 30.10.22, so that they do not apply?
I assume the trick is in the "to be" in the transitional provision?
What would be the reason that the transitional provision does not refer to "the date that the document bears"?