Documents excluded from file inspection (Rule 144 EPC)

After publication of a European application files relating to the application and possibly a resulting European patent may be inspected by the public at the EPO Online register (

The content of the application file becomes public upon publication of the application allowing third parties to check the validity of the created exclusive right based on the published application as all documents relating to the examination and grant procedure is published. However, not all documents relating to the application are published in the file.

According to the “Decision of the President of the EPO dated 12 July 2007 concerning documents excluded from file inspection” (page 123 of the following documents are automatically excluded from file inspection:

a) medical certificates;

b) documents relating to issue of priority documents, file-inspection proceedings or the communication of information from the files, and requests for exclusion form inspection;

c) requests for accelerated search and examination under the PACE-program filed by using the EPO Form 1005 or in a separate document;

d) draft decisions and opinions, and all other documents used for EPO’s preparation of decisions and opinions, which are not communicated to the parties;

e) the designation of an inventor if the inventor has waived the right to be mentioned as inventor.

An applicant may also request to have a document excluded from file inspection by filing a reasoned request according to Rule 144(d) EPC. Such a request may be met, and the document removed from the file if the publication of the document is “prejudicial to the legitimate personal or economic interests of a natural or legal person”. The request may be filed together with the document, but it is also possible to file the request after the document has been included in the file. If the document has already been included, the document will be removed from the file if the request is met.

A request will be rejected if the documents has influence on the examination procedure, e.g. if the documents has been filed to prove inventive step (See e.g. T516/89), but if the document e.g. relates to ownership or evidence e.g. in connection with sale of a company the request is likely to be met.

In T 379/01 the board of appeal argues that a document of substantial public interest can only be excluded from file inspection if it is prejudicial to the legitimate personal or economic interests of a natural or legal person involved (see point 2, supra). In view of the public interest in accessing evidence relevant for deciding a case, it appears that, in this connection, a merely abstract prejudice to hypothetical personal or economic interests is 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 the case of T 379/01 the appellant did not show in which respect public access to the rules of the association would be prejudicial to specific personal interests of the association. Instead, it was argued that unlimited public access to the rules of associations registered under German law would in general violate the personal rights of the associations and its members. As the filed document was considered a key document in the proceedings, the request for exclusion of the document was rejected.

In T1401/05 the Board finds that a balance must be struck between the right of the public to know about a files contents and any fundamental rights of natural or legal persons affected by the file inspection. Only a specific prejudice can be taken into account, if a prejudice is considered being possible in the abstract only, it would be hard to fix its boundaries. Thus, there would be a clear danger that the public interest in having access to the files of a case would be unduly curtailed. The Board notes that the appellant has provided information as to the specific prejudice which would follow from public availability of certain parts of the filed documents filed: First, the documents include company-internal details concerning the monitoring of time limits by the applicant, which would allow a competitor to set up an identical or similar system and could thus deprive the applicant of valuable commercial assets. Second, other details of the documents relate to business information that competitors could use to obtain a competitive edge over the appellant. Third, details could adversely affect the career opportunities of certain employees of the applicant. The Board therefore accept that public inspection of essential parts of the documents would be prejudicial to legitimate economic interests of legal persons, namely the applicant, and to legitimate personal and economic interests of natural persons, namely certain employees of the applicant. As the documents in question do not furnish patent information, the Board applies the rule reflected in paragraph (2)(a) of the “Decision of the President of the EPO dated 12 July 2007 concerning documents excluded from file inspection”, and according to which in such situations the legitimate personal and economic interests prevail. The request is therefore met, and the provisional exclusion of the documents ordered on their reception will thus become permanent.

susanne skjoedt

Gammel Mønt, Copenhagen, Denmark