Third Party Observations

What is the third party observation system?  (Section 801(a), 804(b))

This system allows third parties to make observations through ePCT without strong authentication referring to prior art which they believe to be relevant to the question of whether the invention claimed in the international application is novel and/or involves an inventive step.  There is no fee for this service.  For a comprehensive user guide, see ePCT Third Party Observations.

What is the time limit for submitting observations? (Section 802(a)(ii), 804(b))

Third party observations may be submitted at any time after the date of publication of the international application and before the expiration of 28 months from the priority date, provided that the application is not withdrawn or considered withdrawn.

How should observations be submitted by third parties?  (Section 802(a)(i))

All observations must be submitted through ePCT without strong authentication, either directly or through a link on the bibliographical data tab of the published international application.  The use of the system requires a standard WIPO account.  Each observation must include at least one citation that refers to a document published before the international filing date, or a patent document having a priority date before the international filing date, together with a brief explanation of how each document is considered to be relevant to the questions of novelty and/or inventive step of the claimed invention.  Observations should preferably be accompanied by a copy of each cited document.

Can third parties remain anonymous? (Section 801(b)(i))

Yes, when a third party observation is submitted, the person making the observation may indicate that they wish to remain anonymous.

In what languages should observations be submitted? (Section 802(a)(iii), 804(b))

Observations should be submitted in a language of publication, with the exception that copies of prior art documents may be in any language.

Can the applicant comment on third party observations?  (Section 804(b))

The applicant will be notified about the first published observation, and all subsequent observations will be promptly notified after the expiration of 28 months from the priority date.  The applicant may comment on third party observations until the expiration of 30 months from the priority date.  These comments must be submitted through ePCT or by sending a letter to the International Bureau.  The applicant’s comments should be submitted in English, French or the language of publication of the international application.  The comments will be made publicly available on PATENTSCOPE.

What restrictions exist concerning third party observations? (Section 801(b)(iii), 801(b)(iv))

A third party may only submit a single observation for any international application, and once submitted, it cannot be retracted or modified.  There is also an upper limit of ten observations per international application.

How are observations processed? (Section 802(b), 803(a), 804(a))

Each observation will be examined by the International Bureau to determine if it is an observation on the questions of novelty and/or inventive step.  It will then be made publicly available on PATENTSCOPE.  It should be noted that only the observations and not the uploaded documents are made publicly available.  Uploaded documents are only made available to the applicant, the competent International Authorities and designated Offices.  If the observation is rejected by the International Bureau, the third party will be notified and provided with a reason.

Will third party observations be taken into account by the International Authorities and designated Offices?  (Section 805)

Observations will be transmitted to any competent International Searching Authority, and/or International Preliminary Examining Authority involved in the processing of the application during the international phase, if the International Bureau has not yet received the international search report, supplementary international search report or international preliminary report on patentability
(Chapter II of the PCT) respectively.  To the extent that the observations are received by those Authorities in time to be taken into account in drawing up their respective reports, any prior art referred to in the observations should be considered, provided that either a copy of the prior art is included, or it is otherwise immediately available to the examiner.  The observations will also be transmitted to the designated Offices promptly after the expiration of 30 months from the priority date.  The designated Offices are, however, not obliged to take them into account during national processing.