In view of the ongoing digital transformation in the patent grant procedure at the European Patent Office (EPO), the European Patent Convention (EPC) rules concerning the presentation requirements of documents submitted in proceedings before the EPO have been amended. These EPC amendments will enter into force on 1 November 2023 and will thus notably apply to each EPO document issued on that date or later, whenever the document date triggers a time limit. This is the case, for example, of Office Actions issued by Examining Divisions.
In particular, under the existing rule, there is a notification fiction by which a document served by the EPO, be the document served by postal services or by electronic means, is deemed to be delivered to the addressee on the tenth day following its handover to the postal services or (weirdly enough, nowadays) on the tenth day following its transmission by means of electronic communication ("ten-day notification rule"). This rule will be abandoned. A new notification fiction less favorable to users is instead introduced. According to the new notification fiction, postal and electronic notification are deemed to occur on the date of the document, i.e., the date printed on the document. Since electronic notification by the EPO Mailbox service is used by the majority of European patent attorneys, including those of our firm, and the EPO has a reliable system for tracking documents dispatched using postal services or transmitted electronically via the EPO Mailbox, notifications may now be considered instantaneous and the need to compensate for postal service delays may be limited to specific, exceptional situations.
Although specific safeguards are still envisaged in case applicants, proprietors or opponents or their European patent attorneys do not receive a document or receive it exceptionally late by post or via the EPO Mailbox, all users should be aware of the new way time limits are calculated in all proceedings before the EPO.
To clarify the changes in the practice, we provide in the following two examples of the notification and deadline calculation rules before and after the entry into force of the EPC amendments.
An Office Action under Article 94(3) EPC bearing a date of 31 October 2023 and setting a time limit of four months is delivered to the applicant's European patent attorney by the EPO Mailbox service on 31 October 2023. Applying the old ten-day notification fiction, the document will be deemed notified on 10 November 2023. The four-month time limit will be triggered by this date, thus leading to a time limit of 10 March 2024, a Sunday, which is automatically extended to a time limit of Monday, 11 March 2024, this extension being always available to users. If the applicant requests a two-month extension of time by 11 March 2024, however, since the Office Action bears a date before the entry into force of the EPC amendments, the old calculation rule will be applied, resulting in an extended time limit of 31 October + 10 days + 6 months = 10 May 2024.
An Office Action under Article 94(3) EPC bearing a date of 1 November 2023 and setting a time limit of four months is delivered to the applicant by post on 5 November 2023. Applying the new notification fiction, the document will be deemed notified on 1 November 2023, even if it is delivered by the postal service after this date. The four-month time limit will also be triggered by this date, thus leading to a time limit of 1 March 2024. In other words, although dated one day later than the Office Action in the first example, the time limit for response will expire ten days earlier.
Applicants, proprietors, opponents and the European patent attorneys must ensure that relevant docketing systems and procedures are appropriately modified to take into account the EPC amendments effective on 1 November 2023.
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.