A new service offers an effective and inexpensive way for third parties to bring relevant prior art to the attention of applicants and patent offices during the international phase processing of PCT applications.

As of July 2, 2012, third parties can submit observations on a PCT application directly through the WIPO website. An observation must include a list of prior art references, preferably with copies of the references, and a brief discussion of how each reference is relevant to the novelty or inventive step of the invention claimed in the application. The third party “person” making an observation can do so on behalf of another entity, and they can elect to keep their identity confidential to remain anonymous. There is no official fee for using the service.

Once submitted, the observation will be reviewed by WIPO to check that it is a valid observation and does not include matter unrelated to novelty or inventive step. Once accepted, the applicant will be notified, and optionally may file a response to the observation. The observation and any response by the applicant will be made publicly available on the WIPO website.

There are several important limitations to the WIPO service, including the following:

  • An observation must consist of at least one and up to a maximum of ten prior art references.
  • The indication as to the relevance of the prior art reference(s) must be no more than 500 characters.
  • A person may only make a single observation on a PCT application, and a maximum of ten observations may be submitted on any particular PCT application.
  • An observation can only be submitted from the date of international publication until 28 months from the priority date.
  • The applicant is permitted to respond until 30 months from the priority date.  

The new PCT service coincides with expansion of third party participation in the patent application process in the United States under the Leahy-Smith America Invents Act.