Worldwide: Third-Party Observation: The New Tool To Challenge The Legal Validity Of PCT Applications

In many national and regional jurisdictions, any third party, by so-called third-party observations, may aid its patent office in identifying prior art that might question the patentability of a patent application due to a lack of novelty and/or inventiveness. Recently, the America Invents Act ("AIA") introduced provisions for third-party submissions, effective as of September 16, 2012. Effective July 1, 2012, third-party submissions will now also be codified in the Patent Cooperation Treaty ("PCT") Regulations. The first third-party observations might thus be filed from July 2, 2012 for International Patent Applications during the preliminary international phase.

Existing National/Regional Regulations on Third-Party Observations

The purpose of third-party observations is to give members of the general public the opportunity to notify the Patent Office of written state of the art information that might be of relevance for assessing novelty and/or inventiveness. Most patent offices endeavor to search not only written state of the art in the form of patent documents, but also general written documents such as journal articles, web publications, etc. For example, the European Patent Office ("EPO") entered into contracts with a large number of publishers and database providers for non-patent literature ("NPL") to gain access to such documents. The EPO today has access to more than 400 million NPL-documents. However, the search possibilities are still restricted and cannot cover the entire written state of the art. To avoid the situation where an interested third party has to await a grant of a patent to challenge the legal validity of a claimed subject matter via an opposition or a national nullification procedure, third parties now will have the ability to provide information on written state of the art to the patent office during the examination procedure.

The right of the general public to provide such third-party observations is implemented in such national/regional patent law regulations as the European Patent Convention (Art. 115 EPC) or the German Patent Act (§43 (3) (3) PatG). Beginning on September 16, 2012, the AIA will provide for third-party observations with the U.S. Patent and Trademark Office ("USPTO"). In comparison with the European regulations that give a third party the ability to file third-party submissions during opposition procedures—and thus after the grant of a patent—the AIA prior art submission can be filed only before the earlier of (i) notice of allowance or (ii) the later of six months after publication or date of first rejection.

These provisions all have in common that the party filing the observation does not become a party to the examination procedure. Thus, in comparison with inter partes disputes, the party may not provide additional arguments. This might be, depending on the "quality" of the state of the art, an argument against a third-party observation. If the examining division does not share the arguments of the third party and grants a patent regardless of the filed state of the art, it is also less likely that the granted patent will be later revoked solely based on this state of the art in after-grant procedures such as oppositions or nullification actions.

Further, third-party observations are restricted to written state of the art information, as it would go beyond the scope of the procedure to assert other forms of state of the art, including oral descriptions or public use. This state of the art would require further time-consuming investigations by the examining division and would thus lead to an undue delay of the examination procedure. By limiting third-party observations to written state of the art, the potential misuse of the procedure by a third party to slow down the examination of applications is avoided.

Third-Party Observations Under the PCT

During the February 2012 Meeting of International Authorities under the PCT held in Canberra, Australia, it was announced that third-party observations may be filed for PCT applications. The existing PatentScope system will be used to allow the filing in electronic format with the International Bureau seated in Geneva, Switzerland.

The modifications to the Administrative Instructions—newly added sections 801 to 805—which come into force on July 1, 2012, are available at

Because July 1 falls on a Sunday, it is assumed that the filing system will not be available before July 2, 2012. Certainly, any time limits for filing these observations (see below) will extend to Monday July 2, 2012 based on Rule 80.5 PCT.

Third-party observations can be filed at any time between the publication date of the International Application and 28 months from the priority date of the application, and they must be filed in the language of the application. The only exception for the language requirement is that the copies of the submitted prior art documents may be filed in any language. In this regard, the definition of language according to Rule 12.1 PCT should apply—any language that is accepted by at least one receiving Office to file an International Application. It remains to be seen how documents in a language that is not one of these language are handled, especially whether a translation has to be filed and within what time frame.

In addition to the identification of the application to which it relates and the reference to prior art, the observation must also include a brief explanation of the relevance of each prior art document referred to in the observation and copies of the prior art. The International Bureau may restrict the number of documents that might be filed for each observation. Further, the International Bureau may decide to restrict the number of third-party observations. A total of 10 documents per observation and a total of 10 observations per application was discussed, but the exact number has not yet been determined. Observations filed beyond these total numbers will not be considered. The proposed limitations regarding the number of submissions and number of documents per submission seem to be reasonable and should encourage third-party observations to stay focused on highly relevant documents.

Thus, third parties should file the observations as soon as possible after having identified the application as well as the relevant prior art. If an interested third party misses the deadline or files the observation after the maximum number of submissions has been reached, he or she would have to file the observation separately with each national/regional office after the nationalization/regionalization of the application, provided that the national law allows for such observations at all.

The party filing the observation can choose to remain anonymous, meaning that the International Bureau will not reveal any details of the third party's identity to the public, the applicant, or any International Authority or designated Office. Otherwise, third-party observations are open for public inspection. However, this does not cover copies of the prior art documents uploaded through the filing system, which will be made available only to the applicant, the Competent International Authorities, and designated Offices. This restriction is made to avoid any conflicts with copyright laws in the respective jurisdictions.

After the first third-party observation for an application is received, the International Bureau notifies the applicant immediately. However, subsequent observations will be forwarded to the applicant only after expiration of the 28-month time limit calculated from the earliest priority date. This is also when the International Preliminary Report on Patentability will be established. The applicant may, however, choose to receive immediate notifications of further observations via the ePCT system. This route might be taken to avoid significant costs for applicants who may wish to respond to the observations simultaneously after 28 months from the priority date.

After receiving the observations, the applicant has the opportunity to file comments on the observations with the International Bureau in English, French, or the language of publication of the International Application until 30 months after the priority date. These comments will be made available for public inspection.

The International Bureau will communicate any third-party observation and the applicant's comments promptly to the appropriate International Authorities, especially the International Search Authority and/or International Preliminary Examination Authority, provided that the search report/examination report has not yet been established.

According to a planned change of the Search and Preliminary Examination Guidelines, the International Search Authority must consider the state of the art filed with the observation as if it were part of the field of search. Therefore, the examiner will have to refer to the filed state of the art documents only if he considers them relevant for inclusion in the search report. As long as a filed document was not already found in the search, it will be labeled in the report as "Third-party observation submitted 06/29/2012."

Similarly, the Preliminary Examination Authority has to consider the state of the art filed with the observation as if it were part of the field of search. However, the examiner will have to comment on the state of the art only if he considers worthy of citing.

Finally, the observations and comments will be forwarded or made available to the designated offices in accordance with Rule 93bis PCT. Thus, in a centralized procedure, the applicant can file one response to the observations instead of having to file responses to the patent office of each designated state separately. However, the designated offices are not obliged to take into consideration the observation or the comments.


With the third-party observation system under the PCT, it will be possible to influence the search and/or the examination procedure of an International Patent Application at a very early stage. The system is especially useful in cases in which the third party is in possession of close, clearly relevant prior art.

The submitting party has to keep in mind that there is no further influence of the submitting party on the examination procedure, however. Thus, potentially relevant prior art may be "burned" or, rather, "exhausted" in view of potential after-grant proceedings, especially in the case of prior art documents that are not immediately relevant.

The main advantage of the PCT third-party submission compared to national third-party submissions is the centralized PCT system. It is now possible to file one third-party observation that will be effective in states that do not offer the ability to submit prior art or challenge a patent (or where it is expensive or burdensome to do so) and for states that do not carry out an examination before granting or registering a patent. Although the national offices are not required to take the submission into consideration during their examination procedure, the state of the art documents will become part of the official file and accessible for others to challenge the legal validity of the application as granted patent. Also, it becomes possible to add to the file wrapper unpublished state of the art that might only be partly relevant for the assessment of patentability of the International Patent Application—for example, state of the art under Article 54 (3) EPC being relevant only for assessing the novelty of a claimed subject matter—but that might become fully relevant prior art for later filed applications, such as continuation-in-part applications in the U.S.

In summary, the new regulations in force from July 1, 2012 provide for ample opportunities for third parties to question the patentability of a claimed subject matter of an International Patent Application at an early stage, even making use of the centralized procedure of the PCT.

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.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:
  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.
  • Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.
    If you do not want us to provide your name and email address you may opt out by clicking here
    If you do not wish to receive any future announcements of products and services offered by Mondaq you may opt out by clicking here

    Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

    Use of

    You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


    Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

    The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


    Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

    • To allow you to personalize the Mondaq websites you are visiting.
    • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
    • To produce demographic feedback for our information providers who provide information free for your use.

    Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

    Information Collection and Use

    We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

    We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

    Mondaq News Alerts

    In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


    A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

    Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

    Log Files

    We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


    This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

    Surveys & Contests

    From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


    If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


    From time to time Mondaq may send you emails promoting Mondaq services including new services. You may opt out of receiving such emails by clicking below.

    *** If you do not wish to receive any future announcements of services offered by Mondaq you may opt out by clicking here .


    This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

    Correcting/Updating Personal Information

    If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

    Notification of Changes

    If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

    How to contact Mondaq

    You can contact us with comments or queries at

    If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.

    By clicking Register you state you have read and agree to our Terms and Conditions