Complaints to the European Patent Office (EPO) are dealt with by
a central EPO department known as Directorate Quality Support
(DQS), which is also solely responsible for drafting and sending
the official EPO response to the complainant. The default position
is that both the original complaint and the reply thereto issued by
DQS on behalf of the EPO are not made public, but rather are kept
in the non-public part of the file to which the complaint pertains.
This default position was apparently established by a decision of
the President of the EPO in 2007. On the face of it, this would not
appear to be a particularly contentious position, and is possibly
justified given that complaints could be prejudicial to the
legitimate personal or economic interests of third parties.
Presumably the EPO would rather not place itself in a position of
being a public outlet for any such potentially prejudicial
However, when it comes to oppositions before the EPO, a
potential conflict with the above position arises owing to the
conditions set out in Article 101 EPC in conjunction with Rules 79
and 83 EPC which, in summary, mandate the EPO to notify all
exchanges to all parties during opposition proceedings. This would
appear to include the notification by the EPO to the patent
proprietor, for example, of any exchanges between the EPO,
including the DQS as part of the EPO, and the opponent.
Decision T 1691/15 of the EPO's Technical Board of Appeal
relates to an appeal from a decision of the Opposition Division.
The Board, in considering a number of other matters such as the
patentability of the proprietor's granted European patent,
seemingly by chance discovered that during the opposition
proceedings under appeal there had been a number of exchanges
between the then opponent, their representative and DQS. These
exchanges were placed by DQS in the non-public part of the file and
were not notified to the patent proprietor – presumably under
the influence of the above-mentioned decision of the President
regarding handling of complaints.
In its decision, the Board decided that the above-mentioned
exchanges between the then-opponent and DQS should have been sent
promptly to the patent proprietor by the Opposition Division,
especially since they related to file-specific issues and were not
ostensibly prejudicial to the legitimate personal or economic
interests of third parties.
The Board has therefore provided some clarity that the
conditions set out in Articles 101 EPC and Rules 79 and 83 EPC in
respect of opposition proceedings should, by default, take
precedence over the decision of the President in respect of
complaints handled through DQS. In other words, the President's
previous decision that complaints be kept non-public by default,
should instead be an exceptional position. The Board also stated
that it does not routinely perform a review of the entire file
(public and private) to check whether there are any non-public
documents which should be made public.
Going forward it may become routine practice for the Opposition
Division or Board of Appeal to check the non-public part of the
file for any correspondence that should be distributed to all
parties. It is not yet clear if DQS will do this of its own
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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