21/09/2023
From 1 November 2023, the EPO will abolish the “10 day” grace period, which applies to communications from the EPO that set a deadline for reply.
Under the present regulations, responses to official communications from the EPO can be filed up to 10 days after the deadline specified in the communication without any penalty for the applicant. This legal fiction, provided by current Rules 126(2), 127(2) and 131(2) of the EPC, assumes that the communication was notified to the applicant 10 days after the date of issue of the communication. As a result, and because the period for responding to the communication runs from the fictional notification date, the applicant has an extra 10 days or so to file a response. This provision is therefore often referred to as the 10-day grace period.
To date, this provision has been extremely helpful, as it provides overseas applicants and attorneys, working close to the deadline, with additional time to make sure that any response filed at the EPO is suitable for European practice and addresses all of the objections.
A New Approach from 1 November 2023
For official communications that issue after 1 November 2023, the 10 day grace period will not apply. Thus, the deadline for reply will therefore be the actual date shown in the communication.
Depending on the circumstances, extensions of time may still be possible, either by officially requesting an extension to the term for reply, or by using the EPO’s further processing procedure and paying the associated official fee.
Legal Basis
The new procedure has been brought into effect by a decision of the EPO Administrative Council changing the implementing regulations. The decision and its effect are published in the Official Journal here.
The Official Journal confirms that:
“Amended Rules 126(2) and 127(2) EPC introduce a new notification fiction, according to which postal and electronic notification are deemed to occur on the date of the document. As a result, the current notification fiction by which a document is deemed to be delivered to the addressee on the tenth day following its handover to the postal services or on the tenth day following its transmission by means of electronic communication (“ten-day rule”) will be abandoned from 1 November 2023”.
Guidance
Examination practice at the European Patent Office, especially on matters like inventive step and basis for amendments, can often take a very different approach to other jurisdictions. Thus, instructions that are suitable for other jurisdictions may not always be suitable for European practice, and will occasionally need to be carefully reviewed and even amended before they can be filed at the EPO.
After 1 November 2023, applicants should therefore try and ensure that instructions are sent to us as soon as possible before the deadline. This will allow us to review any instructions and make sure that they comply with European patent practice. If necessary, it will also allow us time to liaise with the applicant and suggest an alternative approach or alterative amendments to overcome the objections.
If you have any questions about the change in procedure, please let us know.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.
