Under Art. 128(4) EPC, after publication of the European patent application, the files relating to it may be inspected on request, subject to the restrictions laid down in the Implementing Regulations. R. 144 EPC (previously R. 93 EPC 1973) indicates those parts of the file which are to be excluded from inspection pursuant to Art. 128(4) EPC. These include documents excluded from inspection by the President of the EPO (R. 144(d) EPC).
The President exercised this power to exclude documents in Art. 1(2) of her decision of 12 July 2007 (OJ SE 3/2007, 125), which provides that: "Documents or parts thereof ... (a) shall be excluded from file inspection at the reasoned request of a party or his representative if their inspection would be prejudicial to the legitimate personal or economic interests of natural or legal persons".
In T 2522/10 the board summarised that the test for exclusion or non-exclusion is clear and straightforward – would the document in question serve the purpose of informing the public about the patent or patent application in issue? While the answer to that question will depend on the facts of each case, if the answer once ascertained is "yes", then there may be no exclusion and the matter need not be considered further. If the answer is "no", then consideration must be given to a further question, namely whether inspection would be prejudicial to the legitimate personal or economic interest of natural or legal persons.
Examples where file inspection would not have served the purpose of informing the public about the patent are to be found in the decisions T 379/01, T 1401/05 and J 23/10. In each of these cases the material which was the subject of a request for exclusion from file inspection had no relevance to the subject matter of the patent (Decision of the President dated 12 July 2007, OJ SE 3/2007, 125).
In T 379/01 the board stressed that the provisions concerning the exclusion of documents from file inspection stipulated exceptions from the principle of public inspection of files pursuant to Art. 128(4) EPC 1973, thus requiring a narrow construction of those provisions. The board concluded that a merely abstract prejudice to hypothetical personal or economic interests was not a sufficient bar. The party requesting such exclusion should rather show that public access to certain documents would be prejudicial to specific and concrete personal or economic interests.
In J 23/10 it could be gathered from the document in question that the applicant paid the renewal fees for certain applications for which they were not the registered applicant. These applications had been transferred to them but this had not been made public. It was still the assignor who was mentioned in the register. In the Board's view, this is information about internal relationships between the parties concerned, the publication of which could be prejudicial to their economic interests, while being irrelevant for the assessment of the patent application as such and therefore to be excluded from file inspection.
In T 264/00 two internal documents, belonging respectively to the appellant and to the respondent and concerning the outcome of a confidential meeting between two of their employees, contained confidential information on the conception, manufacture and marketing of some of the respondent's products. The board held that the dissemination of this information might effectively be prejudicial to legitimate economic interests. Pursuant to R. 93(d) EPC 1973, therefore, the documents had not been made available to the public.
In T 2254/08 the board decided that the inspection of documents that were marked confidential on filing but were publicly accessible on the internet was not prejudicial to the economic interests of the appellant (proprietor).
In T 99/09 the document for which inspection had been requested contained precise technical details, particularly as to the source of the constituents of a medicinal product available on the market and certain specifications for the product's manufacture. Given the technical nature of the document, the board concluded that its disclosure might indeed be prejudicial to the appellant's economic interests. Since the respondents had not objected to or commented on the request to exclude the document from inspection, it was excluded under Art. 1(2)(a) of the EPO President's decision of 12 July 2007 (OJ SE 3/2007, 125) in the light of Art. 128(4) and R. 144(d) EPC.
In T 1839/11 the board came to the conclusion that where a filed document contains information, some of which serves the purpose of informing the public about the patent but some of which does not, the filing of a version of the document in a form from which the latter information has been redacted may form the proper basis for an order excluding the unredacted document from file inspection under R. 144 EPC, the redacted version being open to file inspection.
Filed documents which, following a substantial procedural violation, were to be withdrawn from the part of the file available for public inspection and which did not fall under the exclusions listed in R. 93 EPC 1973 had to be returned to the filing party if it so requested (T 811/90). Similarly, documents marked "confidential" which did not belong to classes of documents to be excluded from file inspection were returned to the party concerned without note being taken of their contents (T 516/89, OJ 1992, 436; see also the later decision of the President of the EPO, OJ 2001, 458). See also T 760/89 (OJ 1994, 797) in Chapter III.G.3.4 "Return of filed evidence".
Date retrieved: 30 December 2018