A new service offers an effective and inexpensive way for third
parties to bring relevant prior art to the attention of applicants
and patent offices during the international phase processing of PCT
As of July 2, 2012, third parties can submit observations on a
PCT application directly through the WIPO website. An observation
must include a list of prior art references, preferably with copies
of the references, and a brief discussion of how each reference is
relevant to the novelty or inventive step of the invention claimed
in the application. The third party "person" making an
observation can do so on behalf of another entity, and they can
elect to keep their identity confidential to remain anonymous.
There is no official fee for using the service.
Once submitted, the observation will be reviewed by WIPO to
check that it is a valid observation and does not include matter
unrelated to novelty or inventive step. Once accepted, the
applicant will be notified, and optionally may file a response to
the observation. The observation and any response by the applicant
will be made publicly available on the WIPO website.
There are several important limitations to the WIPO service,
including the following:
An observation must consist of at least one and up to a maximum
of ten prior art references.
The indication as to the relevance of the prior art
reference(s) must be no more than 500 characters.
A person may only make a single observation on a PCT
application, and a maximum of ten observations may be submitted on
any particular PCT application.
An observation can only be submitted from the date of
international publication until 28 months from the priority
The applicant is permitted to respond until 30 months from the
The new PCT service coincides with expansion of third party
participation in the patent application process in the United
States under the
Leahy-Smith America Invents Act.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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A recent Saskatchewan Court of Queen's Bench decision allowed a court-appointed receiver to sell and transfer intellectual property rights free and clear of encumbrances, finding that a license to use improvements of an invention was a contractual interest and not a property interest.
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