21 October 2022
At its 172nd session on 13 October 2022, the Administrative Council adopted the amendment of a number of EPC Rules, thus fostering the ongoing digitalisation processes in the EPO's patent grant procedure.
The legal changes will enter into force in two packages as follows:
The first part of the package concerns the presentation requirements for documents. These will in future be defined by the President of the EPO instead of in the Implementing Regulations. As a consequence, Rule 46 and Rule 49(3)-(12) EPC will be deleted and incorporated into a decision of the President of the EPO. Rules 49(2), 50, 57(i) and 82(2) EPC will be adapted accordingly. These changes will ensure more flexibility to adapt the presentation requirements as digitalisation processes evolve. Since the decision of the President will re-state the current presentation requirements, Office practice will not be affected.
The second part of the package consist of a change to Rule 65 EPC. In future, documents cited in search reports may be made available instead of being transmitted to applicants. This will reduce paper consumption and supports full availability of all citation types, including multimedia citations. The technical solution to implement the service is under development and will be communicated in due course before its implementation. Thus, the amendment of Rule 65 EPC will not invoke any changes in practice for the time being.
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.