Since July 2, 2012, third parties can submit prior art
observations during the International Phase of an application under
the Patent Cooperation Treaty (PCT). These observations refer to
prior art which the third party believes to be relevant to the
patentability of the International Application solely for reasons
of novelty and/or inventive step. Third party observations can be
submitted at any time starting from the date of publication of the
International Application until its 28-month expiration from the
priority date. They must be filed at the International Bureau (IB).
No official fee is associated with this service at this time.
Each observation may contain up to ten (10) prior art
references. Each observation should point to specific passages of
the identified prior art and contain a brief description of their
relevance. The filing can only be done electronically through ePCT
or PATENTSCOPE, and submissions may be made anonymously, if
Before making an observation available to the public via
PATENTSCOPE and to the International Authorities which have not
issued their report yet, each observation is first reviewed by the
IB to ensure that the observation indeed relates to questions of
novelty and/or inventive step. The Applicant has until 30 months
after the priority date to respond to the observation should he/she
choose to do so, in which case the response will also be made
The IB will thereafter transmit any third party observation and
also any response made by the Applicant to the designated Offices
of the countries where the Applicant desires patent protection.
Some Offices have set up automatic transmittal of such information,
while others request it specifically. However, there is no
guarantee that the individual Offices will consider the
observations during the Examination process of a patent application
under National Phase.
A third party observation can be an interesting tool to use when
one closely monitors competitors. In some cases, relevant prior art
of which one is aware may not have been indicated in the published
International Search Report of a PCT Application filed by a
competitor. One may want to draw this information to the attention
of the National Offices responsible for the Examination of patent
applications before the patent is granted and more specifically, as
early as possible in the life of the application. In cases where an
observation is submitted before the issuance of the International
Search Report, the prior art discussed in the observation may be
taken into account in the report. By filing an observation during
the International Phase, one may save costs, as only one submission
is transmitted to each designated Office concerned.
Finally, a careful review of all relevant prior art is advised
before filing an observation during the International Phase, since
any third party can only file one observation per International
Application, and once submitted, the third party cannot modify or
retract it. Early filing is also preferred since a maximum of ten
(10) observations can be filed per International Application.
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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