A very recent decision of the EPO Boards of Appeal (BoA) held that any exchanges between the EPO and a party (e.g. an opponent or a patentee) relating to a particular inter partes case must be notified to the parties and included in the public part of the file for that case.

This decision follows an appeal filed against a decision of the EPO Opposition Division to maintain a certain patent as granted. During the first instance opposition proceedings, the opponent had exchanged various emails, letters and phone calls with the EPO, including with the EPO’s Directorate Quality Support (DQS), which handles complaints by users of the EPO system.

The EPO’s practice up to now had been that any exchanges taking place with the DQS are confidential and are not made available to the public.

However, in its decision the BoA held that a proper reading of the European Patent Convention, as also supported by a Notice of the EPO published in the Official Journal, clearly shows that in European opposition proceedings, which are inter partes proceedings, all exchanges with the EPO have to be notified to all parties. Specifically, the BoA considered that the principle must also apply to any exchanges made with the DQS. The BoA explained that this was particularly true here, given that the publication of the exchanges made in that specific case could be regarded as prima facie prejudicial to the legitimate personal or economic interests of a natural or legal person, be it a party to the procedure or not, and so the BoA could not see any necessity to exclude them from the public file, emphasizing that such an exclusion should in any case be exceptional, and no exceptional reasons applied here.

During the appeal proceedings, the patentee had even asked the BoA to make a referral to the Enlarged BoA, i.e. the EPO’s highest judicial instance. In fact, the patentee had proposed that the Enlarged BoA be asked to say whether, in the event that one party should engage in unilateral correspondence with the EPO regarding inter partes proceedings, the EPO should be obliged to inform the other party promptly of this correspondence in order to preserve the other party’s right to a fair and impartial procedure, in compliance with the European Convention on Human Rights.

However, the BoA did not agree to make such a referral, indicating that it was itself able to answer the question insofar as it related to the facts of that particular case, and that it was able to solve the issue by providing the complete correspondence to the patentee.

Nevertheless, in its decision the BoA also established that, in more general terms, “[e]xchanges between an opponent and the EPO which have a substantive and/or procedural bearing on the case in opposition proceedings, even if dealt with by the Directorate Quality Support in the context of a complaint handling system, should be communicated without delay to the other party/parties, as any other submission of a party or communication of the EPO in opposition proceedings. Such an exchange with a substantive and/or procedural bearing on the case should figure, by definition, in the public part of the file.”

Although this finding may lead some parties to think twice before filing a complaint with the EPO’s DQS if the complaint is submitted during opposition proceedings, the above decision appears to be an important new addition to the EPO’s approach of making the proceedings before it fully transparent, not only for the parties to the proceedings, but also for any third parties.

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ISSN 2531-4483