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Third party observations are a potentially very useful tool that enables substantive commentary to be filed in relation to pending patent applications. In this article, we will explore the benefits and potential drawbacks associated with third party observations and take a closer look at how the International and European observation procedures may be used to the advantage of an interested party.
Third party observations is the term used to describe commentary, objections, documents and evidence submitted to a patent office or other authority regarding the patentability of a patent application or, less commonly, a granted patent that has been opposed. (Third party observations filed in connection with granted European patents are covered under “European procedure” below.) Observations are referred to as ‘third party’ because they must be filed by an organisation or individual who is neither the patent examiner nor the applicant. Third party observations commonly take the form of written submissions, such as a letter or formal document outlining the objections held by the third party and explaining the relevance of the supporting evidence. Supporting evidence is usually in the form of patent publications, journal articles and press releases, but may include evidence of sale or prior use.
Third party observations are normally negative, i.e. they will usually indicate why the third party believes that a patent application is not allowable in its current form. However, although significantly less common, third party observations may be supportive of an application and can provide commentary and evidence that supports the position of the applicant.
Many patent offices around the world allow third party observations to be filed. For example, observations may be filed in respect of patent applications in countries such as the USA, Canada, China, Japan, and others.
Anybody (aside from the applicant and the examiner) can file third party observations on an application. Some patent offices allow those filing the observations to remain anonymous, whereas other patent offices require the third party to be identifiable. Some patent offices also differ in the way that observations are treated depending upon whether the party filing the observations is identified or anonymous. It is also possible to file third party observations through what is known as a ‘straw man’ where another organisation such as a legal firm files the observations in their own name to obscure the identity of the originator (i.e. the party who prepared and/or instructed the observations).
There are a number of considerations specific to the filing of third party observations in the international procedure.
Third party observations can be filed with the World Intellectual Property Organisation (WIPO) in respect of a pending international application. Observations must be filed between publication of the application and 28 months from the application’s earliest priority date. Observations filed with WIPO may be filed in any PCT publication language, a translation of the observations or evidence may be requested.
WIPO places a limit of 10 third party observations upon a single application and any single submission of third party observations is limited to 10 items of supporting evidence. It may therefore be impossible to file third party observations if an application has been of sufficient interest that 10 sets of observations are already present on the international file.
Third party observations filed in the international phase of an application are placed on file in all countries in which that application proceeds into the national and regional phases. The international procedure therefore allows evidence to be entered into the files of countries where the submission of third party observations is impossible, challenging, or otherwise problematic. Observations may also be filed anonymously in the international procedure, which may provide a means of placing anonymous observations on file in countries where the third party would require identification if observations were filed directly to a national or regional office.
Third party observations filed at WIPO are limited to commentary on novelty and inventive steps. Observations relating to other matters such as clarity or sufficiency are discouraged. However, an examiner cannot ‘un-read’ such commentary and there may be benefits to providing commentary on aspects other than novelty and inventive step when the observations are placed on file in the national and regional application phases.
The timing of filing third party observations in the international phase and the specific international search authority (ISA) or international preliminary examination authority (IPEA) responsible for the application may influence the impact of the observations in the international procedure. For example, the earlier that observations are filed, the more likely an international examiner is to actively engage with the observations. In contrast, if observations are filed close to the deadline for doing so, then it is unlikely that the examiner will have the opportunity to fully consider the observations prior to finalising the International Preliminary Report on Patentability. However, international examiners are under no obligation to consider or comment upon observations even if they are filed at the earliest possible opportunity.
Third party observations may be filed in respect of European applications while the application is pending and following the issuance of a notice of intention to grant and during opposition proceedings. Where observations are filed between the issuance of the notice of intention to grant and completion of the grant process then the EPO may re-open examination if the contents of the third party observations are sufficiently compelling.
In contrast to the international procedure, the Examining Division and the Opposition Division are required to explicitly comment on any third party observations so long as the observations were not filed anonymously. Observations may still be filed anonymously but there is no requirement for the Examining Division or Opposition Division to comment on anonymous observations.
Third party observations are prominent on the EPO register. The prominence of the observations may have the benefit of influencing related applications. For example, where a corresponding US application exists, the applicant should be compelled under the USPTO’s ‘duty of candour’ to identify the documents filed with the European observations in the US procedure via an Information Disclosure Statement.
Opposition proceedings at the EPO may be time consuming and relatively expensive. Third party observations can provide a more cost effective means of influencing the scope of a European application/patent. However, a third party cannot interact further with the Examining Division or Opposition Division (aside from filing further observations) and so opposition proceedings may be preferable where an individual or organisation wishes to be party to proceedings.
If you have any questions in relation to third party observations, or if you are interested in the filing of third party observations in relation to a pending patent application or an opposed European patent, our attorneys would be happy to help. Please reach out to us via our contact page if we can be of any assistance.
Category: Latest Insights | Author: Marianne Privett | Published: | Read more
