UPDATE

As announced by EPO in the Official Journal dated 30 November 2022 (OJ 2022, A101), on 13 October 2022 the Administrative Council of the European Patent Organization issued a decision amending – among others – Rules 126, 127 e 131 EPC (European Patent Convention) which relate to the notification of the communications sent by EPO by means of postal service and by electronic means, stating that the amended Rules will enter into force on 1 November 2023.

In particular, Rules 126(2), 127(2) and 131(2) EPC have been amended in order to remove the 10-days notification fiction according to which a document was “deemed to be delivered to the addressee on the tenth day following its handover to the postal service provider” or respectively “on the tenth day following its transmission” by electronic means. Therefore, the calculation of the time limits in the procedures in front of EPO where the 10-days-rule applied started from the day following the tenth day from the date indicated on 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. Therefore, the calculation of periods will start from the day following the date on the document.

In the Notice from the European Patent Office dated 6 March 2023 concerning amended Rules 126, 127 and 131 EPC (OJ 2023, A29), there is explained how EPO will apply the new Rules.

A document bearing a date before 1 November 2023 will be deemed to be delivered on the tenth day following that date, while a document bearing a date on or after 1 November 2023 will be deemed notified on the date it bears.

For example:

• a document bearing a date of 31 October 2023 will be deemed to be notified on 10 November 2023;
• a document bearing a date of 2 November 2023 will be deem notified on 2 November 2023.

According to the EPO, this change of the notification fiction will result in a simplification for users since it brings the EPC and the PCT (Patent Cooperation Treaty) notification regimes closer together.

Under amended Rules 126(2) and 127(2) EPC, the EPO continues to provide 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.

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.

As in the case today, if a document is not received and 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.

Where a document has been delivered exceptionally late – that is more than seven days after the date it bears – the period for which the deemed receipt of that document is the relevant event under Rule 131(2) EPC shall expire later “by the number of days by which the seven days were exceeded"

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 twelve 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.

It will therefore be necessary to adapt internal timelines and procedures to adequately handle this variation. In GLP we are ready and aligned for the change and always available through our usual contact and communication channels for any questions or assistance about this matter.