Time Limits at the EPO

C. Mercer (GB), ChairC. Mercer (GB), Chair

The EPO has indicated that it is considering whether there need to be any changes to the rules relating to time limits to support the end-to-end digitalisation of the patent granting process. We need to know whether you think that the present Rules need changing and, if so, how the Rules should be changed. If you have any comments on the issues referred to below; please send them to eppc@patentepi.org.

The Ten Day Rule

Rule 126(2) EPC states that:

Where notification is effected by registered letter, ... such letter shall be deemed to be delivered to the addressee on the tenth day following its posting ..."

In practice, this means that, for a notification under this Rule which sets a deadline, it is necessary to calculate the date on which the notification is deemed to have been received and then add on the period for meeting the deadline to work out what is the due date for a response.

This Rule was written when most notifications were sent by postal mail. However, the EPO is now encouraging the use of electronic means for delivering such notifications. The EPO is therefore considering whether the ten day rule is still required.

It could be said that removing the ten day delivery period would simplify the calculation of time limits, especially where the ten day period spans two months. However, most representatives use computerised records systems which may be able to automatically calculate the correct deadline and so there is no need to change. It could also be said that removing the ten day period would reduce the time available to deal with a notification and so could lead to more deadlines being missed or to more further processing being required. It has also been said that this rule gives extra days to respond which are useful when the client is not aware and instructs on the last day. What do you think? What, if anything, would you consider important?

The Response Date

A suggestion which has been put forward is that the EPO should be obliged to put the response date on the front page of any notifications under Rule 126. It has been suggested that this would make it more easy for everyone as the deadline could be seen immediately. However, this assumes that the EPO calculates the deadline correctly. What would be the situation if the EPO incorrectly calculated the response date? What if the notification sets two response dates but only one was on the front page? Would it help you to have the due date on the notification? In particular, would it still help as much if the ten-day rule were to disappear?

Minimum Response Period

Rule 132(2) EPC states that:

"... a period specified by the EPO shall be neither less than two months nor ..."

The EPO considers that there are circumstances where a matter could be dealt with in less than two months, for instance where there is a minor formality objection. However, that may depend on who the applicant is and by whom they are represented. It may be that an applicant is represented by a local agent and the local agent instructs a representative before the EPO. It could further be the case that the applicant does not have an EPO language as their language and requires a translation. This would make meeting a one month deadline even more difficult. It may also be difficult to determine what is a "minor" objection. Something which looks minor to a Formalities Officer may actually be major for the applicant. The time available to respond would also be reduced if the ten day period were to be removed. Would this lead to an increase in the number of requests for extensions or more further processing? What do you think?

If you have any further thoughts about time limits raised by the points above, we would also like to receive them as soon as possible.

As this is addressed to European patent attorneys, and attorneys like deadlines, please let us have your comments by 31st December, 2021.