01 December 2022

EPO confirms rule changes to support digital transformation

Following reports in October that the Administrative Council of the European Patent Office (EPO) had passed “a new package of rule changes intended to adapt the rules of the EPO to the digital age”, the EPO Administrative Council has now published official confirmation of this update.

The decision of the Administrative Council of 13 October 2022 amends a number of Rules under the Implementing Regulations of the European Patent Convention (EPC). These amendments confirm, amongst other changes, the abolition of the ‘10-day rule’ for notification of documents; instead, documents will be deemed to be delivered on the date that they bear.

A safeguard is provided by amended Rules 126 and 127 in the event that documents fail to reach the addressee, in which case the EPO bears the burden of proof to establish that documents were delivered and to establish the date on which they were delivered. If a document is received more than seven days after the date shown on the document, the period for response will be extended at its end by the number of days exceeding seven. This brings EPO practice more closely into alignment with similar provisions under the Patent Cooperation Treaty (PCT) for international patent applications.

The EPO’s decision confirms that this change will enter into force on 1 November 2023 and apply to documents notified by the EPO on or after the same date.

Other rule changes approved by the Administrative Council, which come into force on 1 February 2023, relate to the requirements for the formatting of the application documents. At present, the Rules contain prescriptive requirements relating to (for instance) page margins, the presentation of drawings, and text size and spacing. In recent years, many of these rules have not been strictly enforced, especially with the decline of paper-based filing. The amended rules no longer contain these detailed provisions, but instead grant the EPO President a wide discretionary power to determine suitable requirements. This seems to be intended to allow greater flexibility to adapt the EPO’s practices for electronically-filed documents.

A further rule change as of 1 February 2023 relates to the provision of search results. At present, when a European search report is drawn up, the EPO is required to transmit this to the applicant together with copies of any cited documents. An amendment to Rule 65 now removes the requirement for the EPO to ‘transmit’ copies of the cited documents, and instead specifies that the EPO should “make available” copies of those documents. It remains to be seen how this will be implemented, but one possibility mentioned in the EPO’s detailed proposal document is that the EPO will make citations available in a digital repository rather than sending them directly to applicants. Among other things, this rule change is intended to allow for easier citation of ‘non-traditional’ references such as videos and other multimedia presentations.

The full details of the changes, including their context within the EPO’s Strategic Plan 2023, are now available through the published proposal document.