1.2. Exclusion from inspection under Rule 144 EPC

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.

In T 811/90 (OJ 1993, 728) the board held that filed documents which, following a substantial procedural violation, were to be withdrawn from the part of the file available for public inspection and which did not fall under the exclusions listed in R. 93 EPC 1973 had to be returned to the filing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. 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".

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 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. Pursuant to the decision of the President of the EPO dated 7.9.2001 concerning documents excluded from file inspection (OJ 2001, 458), documents had to be excluded from file inspection at the reasoned request of a party only if their inspection would be prejudicial to the legitimate personal or economic interests of natural or legal persons. 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, the appellant had, during appeal proceedings, submitted a spreadsheet generated monthly by its monitoring system and listing applications for which renewal fees were soon to be payable. It had done so to prove that its monitoring system was adequate in connection with a request for re-establishment of rights. It requested that the document be excluded from file inspection under R. 144 EPC because it mentioned a large number of applications filed worldwide. It contended that, although all the applications shown on the spreadsheet had been published, the list nevertheless provided its competitors with a large amount of information. The document also showed that it paid renewal fees for applications for which it was not the registered applicant, but which had been transferred to it internally, without the transfers having been made public. Its request was granted.

In T 2254/08 the appellant/opponent filed certain documents, marked confidential on the front page, with its grounds of appeal. The appellant/proprietor requested that the documents be removed from the proceedings, and excluded from file inspection, as they were confidential. They were, however, freely available in the internet. The board found that, since the documents were accessible to the public irrespective of any confidentiality statement on the documents themselves, their availability for file inspection did not adversely affect the appellant/proprietor's economic interests. The documents were also relevant to the proceedings since they constituted evidence relating to an alleged public prior use of a possibly relevant device. The documents therefore did not fall into the category set out in R. 144(d) EPC so that there was no reason to exclude them from file inspection.

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.

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