Many patent offices provide the opportunity for third parties to submit prior art documents, such as published patent applications and patents or other publications, which they believe are relevant to the determination of patentability of the claimed invention.
In countries where a patent application is published before the grant of the patent, third parties are in a position to analyze the claimed invention contained in the published patent application before the grant of the patent or the refusal of the patent application. In order to assist a substantive examiner to examine the patentability of the claimed invention, in some countries, third parties may submit prior art information which is relevant to such determination of patentability. In general, the fact that information is submitted by a third party and the content of such information are made available to the public.
While the objective of such mechanism is, in general similar to the pre-grant opposition system in that it aims to increase the validity of granted patents through contributions from third parties, the third party observation system, however, is different from the pre-grant opposition system in many aspects, although it varies from one country to the other.
The main difference lies in the fact that it is an ex parte procedure under which the third party who submitted the information cannot participate in the subsequent examination or review procedure. Further, the submission of the relevant information does not trigger any specific review process (although an examiner may take into account the submitted information, if appropriate), and the information will be simply included in the file which can be consulted by the public. In many countries, there is no time limit for third parties to submit relevant information. The anonymous submission of information is allowed in certain countries. This could help third parties to submit prior art information even if they have business relationship with the applicant and therefore, are unwilling to disclose their identities. Further, in some countries, the grounds for the submission of information may be limited by certain requirements. In general, the submission of third party observations is not subject to payment of fees. In some countries, fees are required if the observations are voluminous.
Theoretically, it is possible to introduce such a system in a patent office that does not conduct substantive examination. The prior art information submitted by a third party will be made available to the public upon the publication of the patent, and it can be used by any party during the post‑grant revocation proceedings. For that reason, in some countries, third parties may also submit prior art information to the patent office anytime during the post‑grant phase. The submitted information will be included in the official file (dossier) which is accessible to the public. In some countries, it is possible to submit, in addition to the prior art documents or the reference thereof, a comment on the relevance of each document submitted. In other countries, it is possible to file a protest.
The submission of information relevant to patentability by third parties is a simple, inexpensive (often free of charge) and informal way to publicly question the validity of a patent. In contrast to the pre‑grant opposition, after a positive determination by the examiner, the submission of observations does not have the effect of suspending the process. On the other hand, due to its informal and ex parte nature, the submitter of the information cannot participate in and influence the review process. Whether the information submitted would be fully considered during the review process largely depends on the examiner who conducts the substantive examination. In most countries the third party submitting the information does not receive any feedback as to how the material is used in the examination process.
In general, the differences in the design of various third party observation systems relate to:
Many patent offices provide the opportunity for third parties to submit prior art documents, such as published patent applications and patents or other publications, which they believe are relevant to the determination of patentability of the claimed invention. Those submissions by third parties are considered to contribute to a higher quality of patents as they assist the patent examiner in the examination of the claimed invention by submitting possibly wider prior art base of the technology concerned.
While, in general, the objective of third party observations is similar to the pre-grant opposition system, third party observations are nevertheless distinct from opposition mechanisms in their procedural aspect: they do not trigger a review process, they are generally restricted to prior art documents, and the third party submitting the information does not become a party to the process (ex parte).
No international treaty regulates the substantive requirements with respect to third party observation mechanisms as such.
However, at the procedural level, the third party observation system was introduced in the Patent Cooperation Treaty (PCT) system in July 2012 and has been operational since then. The International Bureau provides an electronic system for third parties to make observations referring to prior art which they believe to be relevant to the question of whether the invention claimed in the international application is new and/or involves an inventive step. There is no fee for this service.
PCT 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. A third party may only submit a single observation for any international application, and once submitted, it cannot be retracted or modified. A maximum of ten observations may be submitted on any particular international application.
All observations must be submitted through ePCT public services. 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.
A third party making an observation may remain anonymous.
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.
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.
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 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. The person who submitted the observation does not have any additional right to intervene in the processing of the international application.