The fin days with uncertainty rar

Just over a week ago, IP social media was set alight with reports that the EPO Administrative Council (AC) was planning to abolish the 10-day notification rule (IPKat). The EPO itself maintained silence for a week until finally confirming in a press release last week that the 10 day rule will cease to be in effect on 1 November 2023.

The EPO "10 day rule" is currently provided by Rules 126(2), Rule 127(2) and 131(2) EPC. The Rules stipulate that notification from the EPO is considered to occur 10 days after the date on which the notification was sent. If the deadline for responding to a notification is 2 months, for example, then the deadline is calculated as 2 months from 10 days after the date the notification was sent. 

The EPO press release on the removal of the 10 day rule also reports on a number of other measures aimed at "fostering the ongoing digitalisation processes in the EPO's patent grant procedure". Other such "digitalisation processes" that EPO management have recently introduced (or forced on applicants, depending on your viewpoint), include the switch to ViCo oral proceedings for the majority of examining divisional oral proceedings. 

None patent attorneys may be bemused at the excitement surrounding the AC's decision to abolish the 10 day rule. Many patent attorneys, this Kat included, may feel a certain nostalgic fondness for the rule. Correctly calculating the 10 day rule is, after all, one of the first things a trainee patent attorney will learn. 

The 10 rule is also a peculiarity of the European patent system that gives EPO deadline reporting a certain mystic. Sometimes the rule applies, sometimes it does not, but only your European patent attorney can tell you when the deadline actually is. 

A consequent disadvantage of the 10 day rule is thus the uncertainty it can give rise to when EPO deadlines are reported to IP attorneys outside of Europe. These attorneys may, for example, assume a 10 day "grace period" on EPO deadlines, even when the 10 day rule might not actually apply, potentially putting in jeopardy a timely response to the deadline. Going forward, reporting deadlines and chasing instructions from attorneys outside of Europe will be simpler and free from the risk of incorrect assumptions about the applicability or not of an anachronous 10 day extension for slow post. 

However, as with most changes at the EPO, it seems that there is far from universal support for the removal of the 10 day rule, or for the way in which the AC is enacting the removal. Critics of the change argue that some deadlines (e.g. 1 month deadlines) to which the 10 day applies will now be too short, especially when instructions from foreign clients are needed. Removal of the 10 day rule may therefore lead to increased request for extensions in the form of further processing, which will incur the cost of further processing fees. However, given that the 10 day rule is based on the legal fiction that it may take days for a notification from the EPO to reach its recipient, it is difficult to sustain justification for the rule in an era of digital communication. 

The EPO press release indicates that further details of the changes to the rules will follow in upcoming issues of the Official Journal, and as updates in the 2023 Guidelines for Examination. 

On April 1, 2022, the Parliament of Ukraine adopted a dedicated law, “On the protection of the interests of individuals in the field of intellectual property during the martial law introduced in connection with the armed aggression of the Russian Federation against Ukraine” (Law No 2174-IX). The law entered into force on April 13, 2022.

The Law provides that from February 24, 2022, and until the end of the war, “the time limits for taking actions related to the protection of IP rights, as well as the time limits for the procedures for acquiring these rights, are suspended” (§1(1)(1) of Law No 2174-IX). The phrase, “[a]ctions related to the protection of IP rights” is a term used in Ukrainian legislation to refer to renewals for trade marks, patents, utility models, and designs. It also includes other procedural actions, such as oppositions, appeals, and revocation requests.

Where the time limit for renewal of an IP right falls between February 24th and the end of martial law (in effect, the end of the war), the applicant will have an additional 90 days after the end of the war to undertake the necessary actions (§1(1)(2) of Law No 2174-IX).

Moreover, “economic rights to intellectual property, the validity of which expires on [Feb 24] or during the applicability of martial law, remain valid”, until the following day after the martial law is suspended (§1(1)(3) of Law No 2174-IX). Under the Civil Code of Ukraine, economic rights to intellectual property include the right to use, exclusive right to allow use to third parties, exclusive right to prevent unlawful use, as well other economic rights, foreseen under the correspondent laws (art. 424 of the Civil Code).

The Law No 2174-IX was welcomed by the professional community, not least because it allowed flexibility to Ukraine-based attorneys, who are representing foreign applicants (not covered by the Ukrainian Office’s notice, which only applied to Ukraine-based applicants).

However, it also brought issues of interpretation, which may lead to an unlimited extension of patent rights in Ukraine. To wit, case 910/9215/21 interpreted the Law No 2174-IX to mean that patent rights, which expire while martial law is in force, shall be extended until the end of the war.

In that case, the US pharmaceutical company Merck & Co. filed a lawsuit in 2021 against Teva Ukraine (a subsidiary of Israeli pharmaceutical company Teva), Merck & Co. requesting that Teva Ukraine cease infringement of Merck’s rights to a patent No 55409 (“Pharmaceutical Composition for Intravenous Administration, Method for its Manufacture and Method for Treating or/and Preventing Mycosis”). Merck also asked the Ministry of Health to deny Teva’s marketing authorisation to a medicine called “Caspofungin-Teva” on the ground that it infringes Merck’s rights in patent No 55409.

Merck’s patent was filed in Ukraine on April 15, 1997. While the patent was originally set to expire on April 15, 2017 (that is, 20 years after the application date), it was extended for an additional five years under a patent term extension procedure. The patent was meant to finally expire on April 15, 2022 and could no longer be renewed, as it has reached its maximum validity term.

In June 2022, the Commercial Court of Kyiv issued its ruling, supporting the claims of Merck and stating that Merck’s patent would remain valid until the end of the war. In September 2022, the Northern Commercial Appeal Court confirmed this ruling. According to the Appeal Court, §1(1)(3) of Law No 2174-IX establishes that patent rights, which expire during martial law, shall be extended until the end of the war.

In its reasoning, the Court compared §1(1)(3) with the other provisions of the Law. These provisions, the Court reasoned, regulate the suspension of time limits for procedural actions, including the renewal of IP rights such as a trade mark (which can be renewed for an indefinite number of periods) or a patent (maximum validity term).

Nevertheless, §1(1)(3) does not refer to suspension of time limits; rather it plainly states that econimic rights shall remain valid throughout the duration of the war. Thus, reckoned the Court, in §1(1)(3) the legislator meant to maintain the validity of all IP rights, including those that can no longer be renewed.

Accordingly, Merck’s patent remains valid, despite having reached its maximum validity term. [Unlike the Appeal Court, however, the Ukrainian IP Office considers this patent as invalid, as seen from its official database.]

This ruling has been extensively discussed by practitioners, including at recent events held by the Ukrainian National Bar Association and the Ukrainian Bar Association. An appeal to the Supreme Court is expected in order to clarify the legal uncertainty regarding the validity of patents that were meant to expire during the war.