News from Abroad: Availability of Documents at the EPO -- EPO Board of Appeal Decision T1839/11

McDonnell Boehnen Hulbert & Berghoff LLP

[author: Christopher Bond]


The patent

NovozymesFollowing 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

DaniscoDuring 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.


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.


DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© McDonnell Boehnen Hulbert & Berghoff LLP | Attorney Advertising

Written by:

McDonnell Boehnen Hulbert & Berghoff LLP

McDonnell Boehnen Hulbert & Berghoff LLP on:

Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
Custom Email Digest
- hide
- hide

This website uses cookies to improve user experience, track anonymous site usage, store authorization tokens and permit sharing on social media networks. By continuing to browse this website you accept the use of cookies. Click here to read more about how we use cookies.