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

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.

Background

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.

Comment

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.