EUROPEAN PATENT OFFICE
Information from the EPO
Notice from the European Patent Office dated 6 March 2023 concerning amended Rules 126, 127 and 131 EPC
By decision of 13 October 2022,1 the Administrative Council of the European Patent Organisation adopted a set of changes to the Implementing Regulations to the Convention on the Grant of European Patents (EPC) that will support the ongoing digital transformation in the patent grant procedure at the European Patent Office (EPO) and strengthen alignment with the Patent Cooperation Treaty (PCT). The amendments to Rules 46, 49, 50, 57 and 82 EPC concerning the presentation requirements of documents submitted in proceedings before the EPO2and the amendment to Rule 65 EPC concerning the transmittal of documents cited in search reports entered into force on 1 February 2023.3
The present notice relates to the amendments to Rules 126(2), 127(2) and 131(2) EPC. They introduce a new notification fiction for documents served by the EPO by postal services or electronic means, which also impacts the calculation of periods in proceedings before the EPO. These amendments will enter into force on 1 November 2023. Annex 1 provides a graphical overview of the notification and time-limit calculation rules before and after the entry into force of the amendments. Annex 2 illustrates the applicable transitional provision. The term "document" used in the present notice covers decisions, summonses, notices and communications, which the EPO is obliged to notify ex officio in accordance with Article 119 EPC.
The change to the notification fiction will result in a simplification for users since it brings the EPC and PCT notification regimes closer together.
The revised provisions reflect the principle of instantaneous notification in the digital world. Since the launch of the EPO Mailbox service in 2011, the EPO has gained extensive experience with electronic notification. The Mailbox is a reliable, transparent and high-quality service, and now covers 99% (by volume) of all documents the EPO issues. It is available to all professional representatives, and to legal practitioners and applicants located in an EPC contracting state. In addition, MyEPO Portfolio provides a version of the Mailbox with enhanced functionalities. It offers, for example, a more user-friendly interface, with extended searching and filtering and links to view applications and documents in the digital file. A new PCT Link service, which is currently being piloted in MyEPO Portfolio, will extend the Mailbox to international users. MyEPO Portfolio also allows email alerts to be set up for new incoming communications.
II. Fiction of notification on the date of the document
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.
According to established EPO practice, the date of the document is the date on which it is handed over to a postal service provider in the case of postal notification or the date of its electronic transmission to the Mailbox in the case of electronic notification. To ensure this, the EPO post-dates its documents to allow them to be processed internally and issued on the date they bear. The EPO also has a reliable system for tracking documents dispatched using postal services or transmitted electronically via the Mailbox.
In the case of postal notification under Rule 126(2) EPC, the relevant date for the purpose of applying the notification fiction is the date printed on a document, e.g. a communication from the EPO, and not any other date possibly stamped on the envelope carrying that document by a postal service provider. To reflect this, the word "letter" has been replaced with the word "document" in the first sentence of amended Rule 126(2) EPC.
As is the case today, electronic notification under Rule 127(2) EPC will not occur before the date of the document. Accordingly, even if the addressee can access the document via the Mailbox before this date, the decisive date for the purpose of the notification fiction under Rule 127(2) EPC is the date of the document.
III. Safeguards in the case of notification irregularities
Under amended Rules 126(2) and 127(2) EPC, the EPO continues to provide appropriate safeguards to users if they do not receive a document or receive it exceptionally late. The safeguards apply to both notification by post and notification via the Mailbox, although they will likely rarely play a role for electronic notification, given the reliability of the Mailbox.
The second sentence of Rules 126(2) and 127(2) EPC as amended governs the burden of proof in cases where a party disputes notification. In such a situation, the EPO retains the obligation to prove both that the document was delivered and the date of its delivery. Accordingly, the addressee may dispute any aspect concerning the delivery of a document, including the date of its delivery for the purpose of the new safeguard mentioned in section b. below. The steps that the EPO takes following such a dispute will depend on its outcome.
a. Document not received
As is the case today, if the EPO is unable to prove that a document has been delivered, the notification fiction will not apply, and a period linked to that document will not be considered to have started. The document in question will be reissued with a new date, resulting in the application of the notification fiction based on that later date.
b. Document received exceptionally late
Where a document has been delivered exceptionally late, the new safeguard introduced in the last sentence of amended Rules 126(2) and 127(2) EPC will apply. More specifically, if notification is contested and the EPO cannot show that a document reached the addressee within seven days of the date it bears, a period triggered by the deemed receipt of that document will be extended by the number of days by which these seven days are exceeded. So, applying the safeguard, if an addressee received a document 12 days after the date it bears, the period will be extended by five days. By contrast, if the EPO's investigation shows that a document was received, for instance, four days after the date it bears, there will be no change in the period calculation.
The general principles governing time-limit extensions set out in Rule 134 EPC will apply to periods recalculated applying the new safeguard.
Since the new safeguard affects the way the relevant period is calculated, but not the application of the revised notification fiction as such, the wording "has reached him at a later date" has been deleted in amended Rules 126(2) and 127(2) EPC.
The following example illustrates the application of the safeguard:
An examination report under Article 94(3) EPC bearing a date of 13 November 2023 and setting a time limit of four months is delivered to the applicant by post on 25 November 2023. Applying the revised notification fiction under Rule 126(2) EPC, the document will be deemed notified on the date it bears, i.e. on 13 November 2023. In accordance with Rule 131(2) EPC, the four-month time limit will also be triggered on this date. If the applicant points out the late delivery of the document, the EPO, after having established the delivery date, will apply the new safeguard under Rule 126(2) EPC. Since the report was delivered on 25 November 2023, i.e. more than seven days after the date it bears, the four-month time limit set in the report will expire later by the number of days by which the seven days were exceeded. In this case, the seven days were exceeded by five days, meaning that the four-month period will expire five days later, i.e. on 18 March 2024. This example is reflected in Annex 1 below.
c. Document received, but the EPO is unable to prove the date of notification
If a document has been received by the addressee, but the EPO is unable to prove notification due to irregularities, the principles established in Rule 125(4) EPC will continue to apply. In such exceptional cases, the date that the EPO can establish as the date of receipt will be used for the purpose of notification, as is the case today. A period under Rule 131(2) EPC will be calculated from this date.
IV. Calculation of periods in proceedings before the EPO
The notification fiction provided for in Rules 126(2) and 127(2) EPC is relevant in the context of time-limit calculation under Rule 131(2) EPC. Since these provisions are intrinsically linked, some clarification has been provided in Rule 131(2) EPC to take better account of the revised notification fiction.
Under amended Rule 131(2) EPC, in the case of notification, it is the deemed receipt of the document notified that will constitute the relevant event for the purpose of time-limit calculation. As a result, periods triggered by notification will start running from the deemed receipt of a document, i.e. the date of the document under Rules 126(2) and 127(2) EPC.
As the EPO will continue to apply a notification fiction, as is the case today, it will be relieved from establishing the actual date of receipt of each document for the purpose of Rule 131(2) EPC, apart from in exceptional cases of dispute.
V. Entry into force and transitional provision
The amendments to Rules 126(2), 127(2) and 131(2) EPC will enter into force on 1 November 2023. They will apply to documents notified by postal services or electronic means on or after this date. Since the issuing of a document is the event triggering the notification process, the decisive date for determining whether the revised notification and time-limit calculation rules apply to a specific document notified is the date of that document. Examples 2 and 3 illustrate the application of this transitional provision.
A document bearing a date of 31 October 2023 is issued on this date and delivered to the addressee by postal services on 2 November 2023. Since the date of this document lies before 1 November 2023, it will be deemed notified on the tenth day following its dispatch, i.e. on 10 November 2023. This date will be used for the purpose of time-limit calculation under Rule 131(2) EPC. This example is reflected in Annex 2 below.
A document bearing a date of 2 November 2023 is issued on this date and delivered to the addressee by postal services on 3 November 2023. Since the date of this document lies after 1 November 2023, the revised notification fiction and time-limit calculation rules will apply. Accordingly, the document will be deemed notified on 2 November 2023. This date will be used for the purpose of time-limit calculation under Rule 131(2) EPC. This example is reflected in Annex 2 below.
Annex 1 Overview of notification and time-limit calculation rules before and after 1 November 2023
Annex 2 Application of the transitional provision
1 See 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 (CA/D 10/22), OJ EPO 2022, A101.