As of 2 July 2012 the World Intellectual Property Organisation (WIPO) has allowed anonymous ‘third party observations’ on pending PCT applications to be submitted electronically. The aim of this new process is to assist patent offices with indentifying prior art that may influence the patentability of an invention, recognising that there is no ‘perfect prior art search’. Observations are limited to brief comments on novelty and inventive step issues of up to 10 documents and must be submitted within 28 months of the PCT application’s priority date. While the person submitting the third party observation can elect to remain anonymous they must enter their details via a WIPO account. Unlike similar services offered by national patent offices this service does not incur a fee.
Some key points to note with respect to the new ‘third party observations’ include the following:
- A person may only make one observation on any one PCT application. However, up to 10 observations can be submitted by 10 individuals against any one PCT application.
- All observations are reviewed to check they are valid (i.e. do not discuss matters which are not related to novelty and inventive step).
- Once accepted, third party observations are made publically available through WIPO’s online filing system PATENTSCOPE and the applicant named on the PCT application will be notified.
- Applicants have the option of responding to a third party observation. Any response must be filed within 30 months from the application’s priority date and will also be made publically available.
- Third party observations will also be made available to the International Searching Authority (ISA), the International Preliminary Examining Authority and national patent offices.
- Applicants cannot use the third party observation service to make a comment on their own applications. However there is a similar ‘observations on close prior art’ service available to applicants.
- The filing of a third party observation does not give the submitter any additional rights to intervene in the processing of the application, save what may be available to them once the application has entered into the national phase, for example, through opposition procedures and the like.
Implications for applicants and third parties
WIPO recognises that the searches conducted by ISAs may unintentionally miss publications or relevance to an application and that third parties, who may be experts in their field, may be aware of prior publications of relevance. Thus, the new system has the benefit of potentially encouraging a more thorough examination by the ISAs. However, while ISAs must consider the prior art cited by a third party observation, if the examiner deems the document irrelevant, he or she is free to ignore the document. Likewise, national patent offices are not obliged to consider third party observations in their examination procedures.
Despite this, applicants and third parties alike should keep in mind that it may take only one submission to influence the examination process by the ISA and/or multiple national offices. Third party observations therefore provides a means of challenging the validity of a patent application before it is accepted which may have implications for both applicants and third parties. Applicants may decide not to pursue more costly national filings if additional prior art is found and instead may look into other avenues of protection, while third parties are able to establish early on how the patent office is likely to consider their argument. If third party observations are not accepted, the same argument is unlikely to be accepted at later, more time consuming and costly, opposition stages. Conversely, if the observations results in the applicant not proceeding with the application the third party avoids having to oppose it at a later stage. Raising challenges earlier in the process also has the potential to prevent a competitor obtaining unduly broad protection, as a more comprehensive prior art base has been considered during examination of the application. However, at present the system can only be used to address novelty and inventive step issues. Therefore any other grounds for challenging the application would need to wait for the appropriate national or regional opposition proceedings.
For applicants, this system also highlights the importance of conducting a thorough prior art search to establish patentability before filing an application. Monitoring the state of the art including published PCT applications and identifying those of interest should be a routine element of patent portfolio management. It may be worth extending this further into monitoring competitor activity and making submissions on competitors PCT applications where possible.
Limitations on the number of observations that may be submitted (up to 10 observations per application, each citing a maximum of 10 documents) mean is it important that third parties filing an observation identify only the most relevant documents and submit as early as possible. As citations in third party submissions will be made publically available, checking what has already been cited to avoid unnecessary duplication is vital. Third parties wishing to make submissions should closely monitor all international applications of concern.
The new system for filing third party observations will naturally be seen as both a welcome and unwelcome development, depending on whether you are the third party submitting the potentially damaging prior art or the applicant having to address that prior art. In either case, it provides an easy and cost effective system for bringing the prior art to the attention of examiners and improves the likelihood that a more informed decision will be reached regarding the patentability of an invention earlier in the process.