1.2.1 Test for exclusion

In T 2522/10 of 28 January 2014 date: 2014-01-28 the board summarised that the test for exclusion or non-exclusion was clear and straightforward, namely 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 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.

In T 379/01 the board stressed that the provisions concerning the exclusion of documents from file inspection (R. 93 EPC 1973; decision of the President of the EPO dated 7 September 2001, OJ 2001, 458) 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. Citing that conclusion, in T 1401/05 of 20 September 2006 date: 2006-09-20 the board further expressed the opinion that documents that did not furnish information about patent applications or patents were generally subject to being excluded from file inspection, in line with the then applicable decision of the President of the EPO concerning documents excluded from file inspection dated 7 September 2001 (OJ 2001, 458). Such documents did not serve the paramount purpose of such inspection, i.e. obtaining patent information, to which the public was entitled in return for the exclusive monopoly rights that patents confer.

In T 851/18 of 12 April 2019 date: 2019-04-12, the board held that the request to exclude documents from file inspection was successful only in so far as the appellant (patent proprietor) had requested, in the alternative, that the documents in question be made available for inspection in anonymised form only. The board pointed out, however, that the appellant could not successfully invoke the EU General Data Protection Regulation (GDPR) as this was not binding on the European Patent Organisation. The applicable law was instead to be found in the Guidelines for the Protection of Personal Data in the EPO of 1 April 2014, together with Art. 1(2)(a) of the decision of the President of the EPO dated 12 July 2007 concerning documents excluded from file inspection (OJ SE 3/2007, 125) and the provisions in Art. 128(4) and R. 144(d) EPC on which that decision was based.

In T 2893/18 the board found that the fact that the contested documents were communicated to the other opponents was not in contradiction with their provisional exclusion from public inspection. The opposition division had at least provisionally excluded the contested documents from file inspection – as requested and as foreseen in the decision of the President of the EPO dated 12 July 2007 (OJ SE 3/2007, 125) – and examined their relevance for admission into the proceedings, their public availability and their exact influence on the patentability of the opposed patent before ultimately deciding on the issue of public file inspection.