EPO Board of Appeal
Decision T1839/11

By Christopher Bond —

Background

The patent

Following
grant of a patent to Novozymes in November 2009, the patent was asserted in
Denmark, Germany, the Netherlands and the UK.  Danisco filed an opposition in March 2010.  An opposition division revoked the patent in
July 2011 and an EPO board of appeal finally revoked the patent in June
2012.

Opposition
proceedings before the EPO typically take five to six years before a board of
appeal issues a final decision.  This is
an example of the acceleration of EPO opposition/appeal proceedings if national
proceedings require a final outcome from the EPO.

File inspection

The
files relating to a European patent application are open to public inspection
after publication.  Third parties use the
online European patent register to access the filing documents and any
amendments/submissions made by the applicant, and opponent(s) if an opposition
is filed.

If
a document does not "inform the public about the patent application or
patent" it can be excluded from file inspection, upon request.  The party requesting exclusion files a
reasoned request that the inspection would be against their personal or
economic interest.  An example of when a
party requests exclusion of documents from public inspection is during recordal
of a transfer — an applicant wishes to keep detailed financial information
secret and files a redacted version.

UK proceedings

During
the English proceedings in this case, the opponent obtained information
relating to scientific trials, some trials relating to the invention, from the
proprietor.  The English court granted
the opponent permission to refer to the documents during the EPO proceedings,
provided both parties used their best endeavours to keep the documents
confidential.  The EPO board believed the
situation to be unique in that the opponent obtained the relevant documents
from the proprietor during disclosure, but subject to an obligation of
confidence.

The
EPO board found that (confidential) documents filed at the EPO, obtained
through the English disclosure system, are open to EPO file inspection if they serve to inform the public about
the patent (e.g., when considering whether or not the claims of a patent are
inventive or sufficient).  Whether or not
the documents are prejudicial to the "legitimate personal or economic
interests" of the party concerned need only be considered if the documents
do not serve to inform the public about the patent.

The
EPO board found certain documents not relevant for informing the public about
the patent; those documents were either redacted or excluded completely from
file inspection.

Conclusion

If
commercially sensitive material is filed at the EPO, the filer should request exclusion
of the material from file inspection. 
However, any documents filed in support of a patent application or
patent are open to public inspection.

This article was reprinted with permission from Forresters.