Friday, 2 September 2016

T 1691/15 - Confidentiality of complaints during opposition

Complaints filed at the EPO are treated confidentially. But what should happen if an opponent communicates with the complaint department of the EPO relating to his opposition. Should protecting the privacy of the complainer prevail, in this case the opponent, or should the patent proprietor be informed?
In this case the Board decided to inspect the non-public part of the file themselves and forward parts thereof to the proprietor. 
Reasons for the Decision
3. Communication of the exchange of letters between the appellant and the EPO during the opposition proceedings - Referral to the Enlarged Board of Appeal (request 6)
3.1 In his letter dated 7 May 2015 in the appeal proceedings, the appellant referred, among others, to the following letters:
- EPO's letter dated 30 April 2014; and
- Me Wouters's letter dated 3 July 2014.
These letters were not retrievable from the public part of the file which led the respondent to request to be provided with the various exchanges between the EPO and the appellant as well as Me Wouters, or any other unnamed person on behalf of the appellant, if not present in the public part of the file.
3.2 Since the Board has access to the complete file, including the non-public part, it became aware that during the opposition proceedings the appellant has had an exchange with the EPO on file-related issues, based on complaints on his part.
Such complaints are dealt with by a dedicated EPO department called "Directorate Quality Support" (DQS). DQS has been entrusted with the office-wide handling of complaints, being responsible for the administration and management of all (external) complaints, and for drafting and dispatching a reply to the complainant. This centralised procedure is meant to ensure a harmonised treatment of all complaints filed at the EPO.
The complaints as well the DQS replies are by default kept in the non-public part of the file.
The legal basis for this is apparently the Decision of the President of the EPO, OJ EPO 2007, Special edition No. 3, J.3, Article 1(2)(b), which states that documents "may, exceptionally, be excluded from file inspection by the Office of its own motion if their inspection would be prima facie prejudicial to the legitimate personal or economic interests of natural or legal persons other than a party or his representative" (Article 128(4) EPC and Rule 144(d) EPC).
3.3 Rule 79(1) EPC requires the EPO to send a notice of opposition to the patent proprietor. 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.
3.4 The Board, having access to the complete file as handled by the EPO, established that there has been the following exchange with the appellant during the opposition proceedings, documented in the non-public part of the file:
a) Note of a telephone conversation on 5 March 2014 with the opponent regarding his opposition, filed 26 February 2014, faxed to the opponent together with documentation regarding the filing of an opposition;
b) Email of 12 March 2014 of the opponent to the complaint department (Directorate Quality Support-DQS) regarding the opposition and referring to issues that clearly had a bearing on the opposition, more in particular substantive issues, such as the change to a "use" claim and novelty in respect of D1;
c) Reply of DQS to the opponent dated 30 April 2014 (the first letter mentioned in point 3.1 above);
d) The above mentioned (point 3.1) letter of Me Wouters dated 3 July 2014, on behalf of the opponent, clearly related to the substantive issues in the opposition proceedings;
e) Reply of DQS to this letter dated 10 July 2014 indicating that the letter of 3 July 2014 would be treated as third party observations;
f) A letter of the opponent dated 25 June 2015, this time addressed to the President of the EPO, again clearly related to the substantive and procedural issues in the opposition;
g) Reply of DQS dated 17 July 2015, to the letter addressed to the President of the EPO;
h) An email addressed by the opponent to the President of the EPO dated 26 July 2015, claiming procedural and substantive irregularities in the handling of the complaints as well as the opposition;
i) Reply of DQS to the above email, dated 9 September 2015.
3.5 The principle above described should have had the effect that the entire exchange between the then opponent (now appellant) and the EPO - which clearly related to file specific issues - should have been sent promptly also to the patent proprietor (now respondent), so as to comply with the above mentioned well established principle (see point 3.3 above).
This is all the more evident for the letter of 3 July 2014, of which it was indicated by DQS that it would be treated as a third party observation in the opposition proceedings. The same applies to the inclusion of the President of the Office in the complaint procedure, as well as for the complaints regarding the work of the search and examining division, of which the search- respectively primary examiner now formed also part of the opposition division. In view of these two issues, the patent proprietor should indeed have been made aware of the circumstances under which the opposition division had to do its work.
3.6 The Board therefore decided, taking into account the respondent's further arguments in its letter dated 13 April 2016 referring to the above mentioned principle, to provide the respondent with the above mentioned complete correspondence.
3.7 None of the above mentioned letters sent to the EPO and the corresponding DQS replies can be regarded as prima facie prejudicial to the legitimate personal or economic interests of a natural or legal persons, be it a party to the procedure or not.
There was therefore no necessity to exclude them from the public file. Such an exclusion should in any case be exceptional according to the above mentioned (point 3.2) Decision of the President of the EPO, not by default.
The appellant itself had explicitly mentioned some of the letters in his letter dated 7 May 2015 and even a posteriori explicitly agreed at the oral proceedings with the complete correspondence having been communicated to the respondent, arguing that it did not contain any additional arguments that the appellant would not have been aware of in view of the other letters available in the EPO register.
With the communication of the Board dated 26 April 2016 providing the respondent with the correspondence, a communication which is part of the public file, this correspondence becomes public as well, resolving the issue.
3.8 As put forward by the Board at the oral proceedings and not contested by the respondent, the respondent was given sufficient time (around three months) to study this correspondence in order to be able to present its comments and arguments pursuant to Article 113(1) EPC, to counter-balance any appellant's arguments which could possibly have, consciously or unconsciously, influenced the Board.
3.9 The respondent further argued that it was only by chance that it noticed there were exchanges between the opponent and the EPO that it was not aware of. This showed there was a definite issue of proper file handling in cases such as the present.
The Board indeed does not perform an ex officio check of the entire file, more in particular not whether there are non-public parts which should be public. With the present decision and its circulation for information of its colleagues, chairmen and members of the Boards of Appeal, it intends to increase awareness of the problems that may arise when exchanges with the EPO, more in particular under a complaints procedure, are withheld from the other parties in opposition proceedings and from the public part of the file.

This decision T 1691/15 (pdfhas European Case Law Identifier: ECLI:EP:BA:2016:T169115.20160727. The file wrapper can be found here. Photo "IRONIC DOOR SIGN", Simmonds obtained under the Content License (no changes made).


  1. Regarding the complaints letters relating to substantive issues, I see no harm in those being withheld from the public file, as long as those substantive issues are not dealt with in any way outside the actual opposition proceedings. No one is harmed, as long as long as the opponent is being told: we cannot look into that. It gets messy where the DQS decides the one letter to be treated as third party observations. And of course, when the opponent decides to drag any part of the "complaints exchange" into the proceedings itself, soon, the whole of that correspondence is to be cited.

  2. Well, the problem is fairness of the procedure. It could well be that letters to the President and the complaints department may cause 'stimulation' of the OD by DQS and/or the President to decide a certain way.

    The other party should therefore be aware of such letters.

    Any suggestion of partiality should be avoided, and keeping letters secret can easily be interpreted as partiality by denying one party access to part of the correspondence.

    So even if the content of these complaints is not further used in the procedure, even if the complaints contained no substantive arguments: if there is even the possibility that they could influence the outcome, both parties should have them.

  3. The decision has been published in OJ 2017, A15 with the catchwords:

    Exchanges between an opponent and the EPO which have a substantive and/or procedural bearing on the case in opposition proceedings, even if dealt with by the Directorate Quality Support in the context of a complaint handling system, should be communicated without delay to the other party/parties, as any other submission of a party or communication of the EPO in opposition proceedings. Such an exchange with a substantive and/or procedural bearing on the case should figure, by definition, in the public part of the file (see reasons, point 3).