Monday, September 30, 2019 T 2239/15 - Private not the same as confidential

The patent application in this case was refused for lack of novelty based on MPEG standards-related documentation cited in the search report. In response to a previous complaint, regarding similar citations against earlier PCT applications, the EPO informed the applicants that examiners had been instructed that MPEG input documents did not constitute prior art and were not to be cited in search reports. In a later communication, however, they were informed that new facts were available regarding the public availability of a particular citation and that the European search report should mention those documents available to the EPO at the time of drawing up the ESR.

The appellants argued that the citation of the documents in the present case constituted a breach of legitimate expectations and further maintained their position that the cited documents were confidential working documents submitted to the MPEG working group in elaboration of a new standard. They also argued that the established procedures of MPEG required members to treat input documents as private, which was to be construed as 'confidential'. 

The Board considered the issue of confidentiality and the public availability of the documents cited in the present case based on the procedures of MPEG and drew a different conclusion. These procedures require, for example, that documents may be shared only with the permission of the authors and that draft documents are made available to meeting participants on a password-protected dedicated MPEG server. The procedures also specifically allow for the discussion at meetings to include consulting other experts with more specific knowledge on the topics addressed, but who are not actually present at the meetings. 

The Board concluded that the MPEG procedures could not guarantee, nor even expect, confidentiality but seemed to be designed to guarantee a certain privacy of data, by controlling access and transmission, while being sufficiently flexible to allow such transmission with other parties. In the absence of strict limitations,the cited documents were deemed to be have been made publicly available.

On the subject of legitimate expectations, the Board ruled that this principle applies to disadvantageous consequences resulting from the omission of procedural steps. It has no bearing on substantive law and cannot render patentable what would otherwise not be.

The appeal was dismissed.

Sunday, February 12, 2017 T 1440/09 - Public availability of document submitted for standardisation

In the past several discussions took place whether or not documents submitted to a standardisation organisation were public. After submitting the document to the standardisation organisation, the applicant put the document on the Internet, and only then was a patent application filed. The Board had the impression that the applicant thought that since the submission to the standardisation organisation was to be regarded as confidential, that this gave protection for a later submission of the patent application (a form of priority). The Board destroyed this dream.

Friday, September 02, 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