[author: 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.