UK: Third Party Observations For PCT Applications, A New Opportunity To Adversely Affect A Competitor’s Patent Application

Last Updated: 15 October 2012
Article by Nick Bebbington and Beck Greener

Third parties can now submit observations as to the patentability of pending international (PCT) patent applications. In new provisions introduced on 1st July 2012, companies and their advisors can now file prior art and arguments which may make it more difficult for a competitor to obtain a patent. In addition, the applicant of an international application can also submit observations, perhaps to counter to third party observations. The International Bureau (IB) will open any observations to public inspection and also communicate them to the applicant and to the Patent Offices dealing with the application.


Some Patent Offices have long allowed the public an opportunity to submit prior art and comments on the patentability of a patent application (so-called third party observations) with the aim of improving the quality of granted patents. Provisions for making third party observations are, for example, well established before the UK Intellectual Property Office and the European Patent Office. New rules under the America Invents Act which took effect on 16th September 2012 expand the possibility of making third party submissions on US patent applications.

Third Party Observations

Third party observations on pending international applications can be submitted to the International Bureau (IB) at any time after publication of the international application until 28 months from the priority date. Observations must be made via the public section of the International Bureau's "ePCT" electronic portal. Observations received by other means will be ignored. After registering for the service, users can upload up to 10 prior art documents and submit brief (up to 500 words) comments identifying which parts of the documents are most relevant to the questions of novelty and obviousness of the claims. A third party can only submit observations on one occasion on any single international application.

Although a third party must register on the ePCT website, that party can choose to submit observations anonymously. Thus, the third party can keep their identity secret from the applicant and others.

The IB has limited the total number of observations that can be made on an international application to 10. Whilst this is unlikely to be a problem in most cases, a third party considering making observations should check whether a significant number of observations has already been made on a PCT application and, if so, expedite making their own observations.

Third party observations can be made in any of the 10 languages in which an international application can be published, although the prior art documents can be in any language. However, the IB does not carry out any translation of the observations. Therefore, as a practical point, in most cases observations should be in English to maximise the likelihood of their being taken into account by a wide audience.

The person who submitted the observation does not have any right to intervene in the processing of the international application or become party to the examination process.

Applicant Observations

The new provisions also allow the applicant of a pending international application to submit prior art and make comments as to its relevance to novelty and inventive step. Applicant observations can be submitted at any time after publication of the international application up until 30 months from the priority date. Observations are made via the private section of the International Bureau's "ePCT" electronic portal. Applicants can make observations in response to third party observations, or of their own initiative. It is not mandatory to respond to any third party observations, but any observations in response can be made by letter to the IB or by using ePCT. Any comments on the prior art must be in English, French or the language of publication of the international application.

This system for the applicant to make observations at the IB can be distinguished from the applicant's right under the PCT to respond to the international search report or to a report from the International Preliminary Examining Authority ("IPEA"). Such a response should continue to be filed at the relevant International Searching Authority ("ISA") or IPEA.

International Bureau (IB) Procedure

The observations are promptly laid open to public inspection by the IB via their online file inspection portal PATENTSCOPE. However, due to potential copyright issues, uploaded prior art documents are not made publicly available.

In the case of observations by a third party, the IB notifies the applicant and sends them a copy of the observations and the prior art. The first set of observations is send to the applicant promptly. Any subsequent observations are only sent to the applicant at 28 months from the priority date.

The IB also promptly sends a copy of the observations and prior art to the ISA or IPEA provided that the relevant authority has not already drawn up their report. The Authority is required to consider the observations when drawing up their report.

At the end of the international phase, the IB sends a copy of the observations and prior art to the designated Patent Offices. It is up to the individual Patent Offices to decide what use to make of observations.


Because a third party filing observations cannot further influence proceedings, it is not always the best way forward. Third party observations are generally most useful where a prior art document is a "knock out" in a novelty attack against claims in a patent application. In such cases, the document speaks for itself. In other cases, a third party might prefer to keep the prior art document in reserve, for later inter partes proceedings where they will have an opportunity to explain the relevance of a document and influence the thinking of the tribunal. This, of course, needs to be balanced against the significant expense typically associated with such proceedings.

For those situations where making third party observations has been determined to be appropriate, the new provisions will offer a useful central procedure for third parties to put relevant prior art on the file of an international application and have this drawn to the attention of the relevant Patent Offices. This will benefit those who wish to prevent, at relatively low cost, a competitor from obtaining unduly broad protection from an international patent application. Similarly, the new provisions can be useful for an applicant wanting to address any prior art that has come to their attention since their application was filed.

As set out above, third parties have 28 months, and applicants have 30 months from the PCT priority date to file observations. If the deadline is missed the only option will be to file observations separately before each Patent Office in which the application proceeds after the end of the international phase, to the extent that this is possible. Third parties only have a single opportunity to make observations on a particular international application, so care should be taken to identify the most promising prior art.

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.

In association with
Related Topics
Related Articles
Related Video
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
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of

To Use you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

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 or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq 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 of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

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