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
First package – entering into force on 1 February 2023
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.
Second package – entering into force on 1 November 2023
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.