The fratricidal war between Danish companies Novozymes and Danisco has been all over the news recently, even on the Pat Lit blog. Well, it has finally reached K’s law, too.
The Opposition Division had revoked the patent. The Board of appeal decided not to admit the only requests on file, which had been filed belatedly, and therefore dismissed the appeal, which made the revocation final.
The decision contains some interesting paragraphs on exclusion from file inspection.
In the course of proceedings between the parties before the High Court of England and Wales (Patents Court) concerning the validity and infringement of the opposed patent (“the English Proceedings”), the opponent had obtained from the patent proprietor, as part of the English process of disclosure, various documents relating to the results of trials and research programmes conducted by the patent proprietor(“the Disclosure Documents”). Following a decision of the English Court dated 9 March 2012 the opponent was permitted by the English Court to use the Disclosure Documents in the present appeal proceedings.
The terms on which it was allowed to use them were set out in the order of the English Court dated 9 March 2012 (“the English Court Order”), by which inter alia:
(a) The patent proprietor undertook that it would not resist the introduction of the Disclosure Documents into the appeal proceedings;
(b) The opponent was given permission to use the Disclosure Documents in the appeal proceedings;
(c) Both the patent proprietor and the opponent were ordered to use their best endeavours to keep the Disclosure Documents confidential to the extent that the various jurisdictions concerned so allowed (but the absence of any such provisions (whether existing in law or applied by the relevant court or tribunal) allowing confidence in the Disclosure Documents to be kept would not prevent their use);
(d) The Disclosure Documents were to remain confidential and might only be used for the purposes of inter alia the present appeal proceedings and were to be subject to the obligations set out in the paragraph (c) above.
[3.1] A 128(4) provides that:
“After the publication of the European patent application, the files relating to the application and the resulting European patent may be inspected on request, subject to the restrictions laid down in the Implementing Regulations.”
R 144 provides that:
“The parts of the file excluded from inspection under A 128, paragraph 4, shall be:
(d) any document excluded from inspection by the President of the EPO on the ground that such inspection would not serve the purpose of informing the public about the European patent application or the European patent.”
Article 1(2) of the Decision of the President dated 12 July 2007 (OJ EPO, 2007, Special edition No. 3, p.125) 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 interest of natural or legal persons”.
[3.2] Prejudice to the economic interests of a party is therefore a necessary requirement for exclusion from file inspection in a case such as the present but is not of itself a sufficient requirement. The overreaching principle is set out in R 144(d), to which the President’s Decision must read as being subject, namely, that documents may be withheld from public inspection (only) if such inspection would not serve the purpose of informing the public about the patent. To this may be added the following two comments:
(a) The provisions making an exception from the general principle of public access to the file are to be construed narrowly (see T 379/01 [6.1]).
(b) One of the purposes of file inspection is to enable the public to obtain information about the patent, being information to which it is entitled in return for the exclusive monopoly rights which the patent confers (indeed, this is the “paramount” purpose of file inspection according to the Board in T 1401/05 [5]).
[3.3] 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.
[3.4] In the board’s view, much of the information in the documents which were the subject of the parties’ original requests for exclusion from file inspection clearly served the purpose of informing the public about the patent in the sense of R 144(d). In particular it provided information about whether the subject matter of the patent was inventive and/or sufficiently disclosed. Thus, D46R was extensively referred to in the course of the submissions of the parties on inventive step and these references were taken into account by the board in reaching its conclusions […]. The same was potentially true of the documents D55 and D56 which had been filed by the [patent proprietor], although these documents were not in the event relied on. The various written submissions of the parties referring to these materials and which were also the subject of requests for exclusion from file inspection a fortiori served this purpose.
[3.5] It is also the case that if it had been necessary for the board to have given written reasons for a decision on the substantive issues concerning the requests for maintenance of the patent (in particular on inventive step and sufficiency) such reasons, which would have been published, would inevitably have contained references to these materials as they concerned the validity of the patent.
[3.6] It was for these reasons that the board indicated its view during oral proceedings […] that the original requests for exclusion from file inspection were unlikely to be granted in such a wide form. The board did not see that it had the power to make such an order.
[3.7] The situation is unusual and, so far as the board is aware, unique in proceedings before the Office, in that the [opponent] has obtained these documents from the [patent proprietor] as part of the English disclosure system but subject to an obligation of confidence and before it was known whether the [opponent] would be released from this obligation after a trial in the English Proceedings. The board also acknowledges that both parties have been ordered by the English Court to use their best endeavours to keep the Disclosure Documents confidential to the extent that inter alia the EPC allows. Nevertheless, the [opponent] was not prevented from making use of the documents in these appeal proceedings, and indeed was expressly allowed to do so. The board is therefore not concerned about a case in which the documents filed were in some way improperly obtained and does not need to consider what the powers of the EPO might be in such a case.
[3.8] In the light of the board’s indication, the parties sensibly modified their requests in the course of oral proceedings […]. As to the documents which are now sought to be excluded from public file inspection, the board accepts that in part they contain information which does not serve the purpose of informing the public about the patent and also that their publication would be likely to prejudice the economic interests of the [patent proprietor] and the [opponent] respectively. So far as concerns the [patent proprietor], the board accepts the [patent proprietor’s] submission that this information would give a competitor a potential springboard by showing the research and development work that it had carried out. The documents would also potentially provide third parties with information about the methodology, techniques and strategies followed by the [patent proprietor] in a more general sense. So far as concerns the [opponent], D55 and D56 also in part contain commercially sensitive information which concerns its business but which has nothing to do with the patent.
[3.9] The one remaining point of dispute between the parties was that the [opponent] argued that some of the passages which had been removed by the [patent proprietor] from D46R to obtain D46R(2) contained information which, even if it was prejudicial to economic interests of the [patent proprietor], did in fact serve the purpose of informing the public about the patent. This information for the most part related to the capacity of the [patent proprietor’s] plant and rebutted the [patent proprietor’s] assertion that the reason why it had abandoned pelleting trials was because it had insufficient capacity to carry on the trials and not because it could not get the invention to work.
[3.10] While this information may have been relevant to understanding the reasons why the [patent proprietor] at one stage abandoned pelleting trials, the board considers that such information serves no purpose of informing the public about the patent itself. The same applies to other information that the [opponent] said should not be redacted. For this reason the board rejected the argument of the [opponent] on this issue.
[3.11] The information contained in these documents which serves to inform the public about the patent is available in the various redacted versions of the documents, which will be available for file inspection. The interests of the public are therefore preserved and the board will accordingly make the order requested.
NB: the Board also provided two take-away headnotes:
1. A document filed in proceedings and which serves the purpose of informing the public about the patent may not ordinarily be excluded from file inspection under R 144 EPC and Article 1(2) of the Decision of the President dated 12 July 2007 even though such inspection would be prejudicial to the legitimate personal or economic interests of natural or legal persons (Points [3.2-6]).
2. 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, the redacted version being open to file inspection (Points [3.8,11]).
Should you wish to download the whole decision, just click here.
The file wrapper can be found here.
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