T 2893/18 - File inspection exclusion appeal

Key points

• This is an unuasal appeal about a request to exclude documents from the public part of the file.
• " By letter dated 18 December 2017, the patent proprietor indicated that it had been informed that opponent 2 intended to make written submissions in preparation for the oral proceedings." The patentee then requests that the letter of the opponent is excluded from the public file and that the letter is not sent to the other opponent.
• First oral proceedings before the OD then take place. The OD decides to admit the documents at issue in the proceedings. The OD then concludes that second oral proceedings are to be held.
• " The present appeal was filed by the patent proprietor following a communication annexed to the summons [issued 31.08.2018] to second oral proceedings in opposition proceedings." 
• The question is whether this appeal is admissible, in particular, whether there is a decision. 
• The Board: " although an implicit decision is not acknowledged as such in the Convention, its possible existence cannot be excluded either because there are circumstances where a decision can be inferred from the context rather than based on the form of a document" 
• " The appellant argued [] that the contested documents were not only listed in this communication but were also commented upon. Therefore, their content was - at least indirectly - made available to any third party reading the communication." 
• " Although the board acknowledges the logic supporting this argument, it can nonetheless not draw the same conclusion as the appellant." 
• " There is no mention at all of the request for their exclusion from file inspection, let alone a decision rejecting such a request. Indeed, the communication appears to only contain the opposition division's provisional opinion on the therein identified outstanding issues and does not seem to even hint at a decision on any issue. Moreover, the contested documents are still in the non-public part of the file." 
• " Thus, the present appeal was filed in the absence of a decision and therefore has to be rejected as inadmissible" 
• " The fact that the documents were communicated to the other opponents is not in contradiction with their provisional exclusion from public inspection." 
•  The other opponent is party to the appeal proceedings. " Regarding the appeal, as foreseen in Article 107, second sentence, EPC "any other parties to the proceedings shall be parties to the appeal proceedings as of right". The provision contains no exception and allows no different interpretation, nor could the appellant's arguments shed a different light or lead to a different understanding. Thus, the opponents are parties to the present proceedings."

T 2893/18 - link

Reasons for the Decision

Party status of opponents 1 and 3

1. The appellant argued, in its submissions of 3 July 2019, that the issues to be considered in the present appeal warrant the participation of only opponent 2 in the proceedings and the exclusion of the other two opponents. The appellant reasoned that opponents 1 and 3 should not have party status since the appeal was not concerned with the opposition itself but with the incidental issue of the exclusion from file inspection of documents submitted by opponent 2 and the correct procedure to be applied when deciding it. They should even have been excluded from participation in the discussion of this issue during the opposition proceedings to safeguard that the contested documents remained unavailable to the public.

2. As the opposition division correctly pointed out in its communication dated 22 December 2017, all documents submitted in the course of opposition proceedings and all exchanges between one party and the opposition division have to be communicated to all parties due to the inter partes nature of opposition proceedings (see also 5.2 below).

Regarding the appeal, as foreseen in Article 107, second sentence, EPC "any other parties to the proceedings shall be parties to the appeal proceedings as of right". The provision contains no exception and allows no different interpretation, nor could the appellant's arguments shed a different light or lead to a different understanding. Thus, the opponents are parties to the present proceedings.

Admissibility of the appeal

3. The appellant's case rests on the argument that the opposition division's communication dated 31 August 2018 contains the implicit decision to reject its request for the exclusion of documents D18-D37 from public file inspection.

The appellant then uses the date of issuance of this communication as the basis for the calculation of the relevant time limits as regards the appeal.

4. The board cannot accept this interpretation.

4.1 As set out in the board's communication in preparation of the oral proceedings, although an implicit decision is not acknowledged as such in the Convention, its possible existence cannot be excluded either because there are circumstances where a decision can be inferred from the context rather than based on the form of a document.

4.2 Following this line of thought, the board considered whether the opposition division's communication dated 3 January 2018 (dealing exclusively with the issues of file inspection, exclusion therefrom and forwarding of documents to the other parties in opposition proceedings) was such a decision. The communication contained at least the clear statement "The general request to exclude any letter, including annexes, of opponent O2 filed in response to the summons to oral proceedings from file inspection cannot be granted." (emphasis added by the board), an equivalent for which is nowhere to be found in the communication of 31 August 2018. However, the communication of 3 January 2018 contained neither a proper reasoning nor any mention that the deciding body had allowed the separate appeal, as foreseen in Article 106(2) EPC for a decision not terminating proceedings regarding one of the parties (intermediate or ancillary decision) to be appealable on its own. The communication had therefore to be discounted as a potential implicit decision.

4.3 The board then considered whether the communication identified by the appellant qualified as an appealable decision. Its provisional opinion was that also that communication was inadequate to stand in lieu of a proper decision. It was clear that the communication was intended as preparation for the second oral proceedings to be held before the opposition division. Its content - as all respondents pointed out - merely identified a number of issues that the division considered had been conclusively discussed during the first oral proceedings, so that there was no apparent need to reopen the respective discussions (point 2, "topics already discussed ...", pages 7 to 14).

4.4 The appellant argued at the oral proceedings that the contested documents were not only listed in this communication but were also commented upon. Therefore, their content was - at least indirectly - made available to any third party reading the communication.

Although the board acknowledges the logic supporting this argument, it can nonetheless not draw the same conclusion as the appellant. The substantive details contained in the communication mainly serve the purpose of justifying the admission of the documents in the proceedings (decided upon during the first oral proceedings), explaining their relevance to the claimed subject-matter and setting out the issues relating to their public availability on which the witnesses are to be summoned and heard.

There is no mention at all of the request for their exclusion from file inspection, let alone a decision rejecting such a request. Indeed, the communication appears to only contain the opposition division's provisional opinion on the therein identified outstanding issues and does not seem to even hint at a decision on any issue. Moreover, the contested documents are still in the non-public part of the file.

4.5 The appellant also argued on the basis of the necessity to formally and definitively clarify which documents are part of the file and can be taken into account to decide the broader matter at hand.

It is true that the Decision of the President of the EPO on the exclusion of documents from public inspection hints at a decision on the issue having to be taken and that the relevant part of the Guidelines for Examination certainly indicates that regarding such requests ancillary proceedings may be appropriate. However, there appears to be no obligation on the competent EPO body to take such ancillary decision susceptible of separate appeal. Indeed, there may be circumstances, where other issues need to be clarified first, and a decision might only be appropriate together with the decision concluding the relevant procedure.

4.6 Prejudice to the legitimate personal or economical interests of natural or legal persons is a necessary requirement for the exclusion of documents from file inspection pursuant to Article 1(2)(a) and (b) of the Decision of the President dated 12 July 2007. However, this prejudice is still subject to the overriding principle set out in Rule 144(d) EPC, 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 (see also T 1839/11, point 3.2 of the reasons). If the opposition division had had to decide the case on its substantive merits, i.e. regarding the maintenance of the patent, and such documents were considered relevant, the reasons for the decision, which would have been published, would inevitably have contained references to the objected documents as they concerned the validity of the patent. Thus, documents mentioned in a decision of an opposition division must in the end be open to public file inspection because they serve the purpose of informing the public about the European patent.

5. It appears in the present case that the opposition division indeed intended to decide this issue together with its final decision on the oppositions themselves as only then they would have known which documents would have had to be mentioned in the written decision and could therefore no longer be excluded from public file inspection. Thus, the opposition division at least provisionally excluded the contested documents from file inspection - as requested and foreseen in the aforementioned Decision of the President - and examined their relevance for admission into the proceedings (already decided), their public availability and their exact influence on the patentability of the opposed patent (still outstanding) before ultimately deciding on the issue of public file inspection.

6. The fact that the documents were communicated to the other opponents is not in contradiction with their provisional exclusion from public inspection.

As explained in decision T 1691/15 (OJ EPO 2017, A15), in point 3.3 of the Reasons:

"Rule 79(2) EPC states that in case there is more than one opponent, the other opponents will receive a copy of the others' opposition. Rule 79(3) EPC requires the EPO to send any observations and amendments filed by the patent proprietor to the other parties. Rule 81(2) EPC requires the EPO to send any communication under Article 101(1) EPC and any reply thereto to all parties.

The principle as established by the above is that in opposition proceedings, which are inter-partes proceedings, all exchanges have to be notified to all parties. This is also acknowledged in the Notice of the EPO dated 3 June 2009, OJ EPO 2009, 434."

7. Thus, the present appeal was filed in the absence of a decision and therefore has to be rejected as inadmissible (Article 106(1) and (2) EPC). As a consequence, certain requests of the appellant are either rendered moot or have to be refused, namely:

- the request for remittal of the case as the case will revert automatically to the opposition division;

- the request for the issuance of specific instructions to the opposition division, in particular for the exclusion of certain parts of the purported decision/communication in preparation for the oral proceedings before the division, since there is no admissible appeal to consider;

- the request for referral of questions to the Enlarged Board of Appeal;

- the request for the reimbursement of the appeal fee.

Apportionment of costs

8. For an apportionment of the respondents' costs relating to the present procedure in accordance with their respective requests, it would have been necessary for the board to be able to establish an abusive behaviour on the part of the appellant.

However, filing an appeal is the legal means of redress when a party perceives that a negative decision has been issued against it. Even though other courses of action were available which might have allowed the appellant to seek redressing the perceived wrong more effectively, the board could neither establish, nor was it convinced by the respondents, that the appellant's actions were dictated by malice.

In the absence of an abuse of procedure, the principle of each party covering its own costs remains applicable. The respondents' requests are thus refused.

9. Thus, the documents filed by the respondents in support of their respective requests no longer need to be in the public part of the file. Following a request by each of the respondents to this end, the board decides to exclude this evidence from file inspection.

Order

For these reasons it is decided that:

1. The appeal is rejected as inadmissible.

2. The request for reimbursement of the appeal fee is refused.

3. The respondents' requests for apportionment of costs are refused.

4. The four invoices filed by respondents 1 and 3 by letter dated 2 September 2019 and the two invoices filed by respondent 2 by letter dated 17 September 2019 are excluded from file inspection.