Brief from the AdvoKat: UK Disclosure - It’s not chickenfeed (EPO Decision T1839/11)

The AdvoKat

At the end of June, the Technical Board of Appeal (TBA) of the European Patent Office (EPO) issued its reasons for the decision revoking Novozymes's European Patent 18034592 which concerned the protection of enzymes added to animal feed in the process of heat sterilization, the market for which is surprisingly large.

The background of the case is unusual and somewhat complex, but of practical importance, the case addressed the issue of how the EPO should handle documents provided by way of disclosure in concurrent UK proceedings.

Novozymes began proceedings against Danisco, a subsidiary of DuPont, in Denmark, Holland and Germany and had obtained preliminary injunctions in Denmark and Holland. Danisco brought proceedings in the UK applying to revoke the Patent.

Surprisingly the decision of the Opposition Division was given before the English proceedings could come to trial – the OD’s decision coming some 16 months after the Opposition was commenced. During the course of the English proceedings, however, Novozymes gave disclosure of its test results which showed that the results in the Patent were only a small part of the results which it had available to it. It was apparent in particular that a number of the embodiments in the Patent had been carried out by the patentee but with results that were no better, and in some cases worse, than the prior art.

Danisco applied to use these documents in the EPO and, at the same time applied to stay the English action pending the outcome of the EPO proceedings. Both applications were refused by Arnold J – judgment here – and were upheld by the Court of Appeal. Arnold J felt that the English courts would be the better forum for Novozyme’s disclosure to be considered with the benefit of cross-examination and expert evidence and would likely hear the case before the hearing before the TBA.

Following a further application for disclosure which was allowed by Morgan J ([2012] EWHC 389 (Pat)), Novozymes applied for an adjournment of the English action which meant that the reasons Arnold J had given for not allowing use of the documents in the EPO (i.e. that they would be better considered in the English proceedings) ceased to apply and Novozymes accepted that its documents could be used provided that this was on terms which protected the confidentiality of the documents insofar as the procedures of the EPO allowed. The adjournment was allowed by Mann J ([2012] EWHC 696 (Pat)) on terms which are set out in the decision of the TBA.

At the hearing before the TBA the TBA revoked the Patent for lack of inventive step as the results from Novozymes disclosure showed that certain embodiments in the Patent conferred no advantage over the prior art. The decision is to be found here.

The AdvoKat: Friend or foe to
chickens?

The headnote sets out the position that the TBA adopted with regards to Novozymes’ disclosure:

1. A document filed in proceedings and which serves the purpose of informing the public about the patent may not ordinarily be excluded from file inspection under Rule 144 EPC and Article 1(2) of the Decision of the President dated 12 July 2007 even though such inspection would be prejudicial to the legitimate personal or economic interests of natural or legal persons (Points 3.2 - 3.6). 

2. Where a filed document contains information, some of which serves the purpose of informing the public about the patent but some of which does not, the filing of a version of the document in a form from which the latter information has been redacted may form the proper basis for an order excluding the unredacted document from file inspection under Rule 144 EPC, the redacted version being open to file inspection (Points 3.8 and 3.11).

The result was that those documents which were relevant to the TBA’s decision were not withheld from public inspection but that non-relevant information could be redacted.

Of practical significance there has been a long held perception that the EPO is not generally interested in documents produced as a result of national litigation but in this case the Patentee’s own documents were the basis on which the TBA revoked the Patent.  The AdvoKat questions whether we may start seeing greater use of disclosure obtained in national proceedings before the EPO given its influence in this case.