Third party observations

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Chapter 1. Third party observations during the PCT procedure

Section 1.1. Legal basis

At present, there is no legal provision (ie in treaties) to make third party observations during the PCT procedure.

Nevertheless, this possibility has been offered by WIPO in its ePCT service since July 2012 (Third party comments via the ePCT service).

Section 1.2. Identification of the observer

It is possible to make anonymous comments (even if you have to give your identity to WIPO).

Section 1.3. Language and form

1.3.1. Language

The language must be a language of international publication (any one, not necessarily that of the publication of the application considered).

Nevertheless, WIPO advises making its comments in a language that is likely to be understood by the applicant and the Offices.

1.3.2. Form

A priori, only the observations made via the ePCT tool of PATENTSCOPE (Internet page) will be taken into account.

Section 1.4. Representation

No representation obligation seems to be required (we do not see on what basis).

Section 1.5. Person able to make observations

A priori, any person may make observations, except the applicant and, where appropriate, his representative.

Section 1.6. contents

It is possible to make free observations on the different sets of claims.

In addition, the observer may mention up to 10 documents that he considers relevant, indicating the passages and / or the most notable drawings. A short motivation is possible.

Section 1.7. Period

It is not possible to make observations:

  • if the international application has not been published;
  • if the delay 28 months from the priority has expired;
  • if the application has been withdrawn;
  • if the observer has already made an observation for this request;
  • if more than 10 observations have already been made for this application.

Section 1.8. Procedure

Once the submission is submitted, it is verified by the International Bureau to verify that this corresponds to an observation relating to the patentability of the application in question.

Once validated,

  • the applicant is notified of this observation;
  • the ISA is notified if the search report has not yet reached the IB;
  • the SIS is notified if the preliminary examination report, although requested, has not yet reached the IB;
  • third party observation will be publicly available in the file;
  • designated or elected Offices (which have requested this information) will receive the submission and any response from the applicant after the 30-month deadline after the priority date or if it specifically requests it in connection with a national phase.

The applicant may respond to this observation until the expiry of the 30-month period after the priority date.

Chapter 2. Third party representations before the EPO

Section 2.1. Legal basis

Third party observations are possible in any proceedings before the EPO (A115 EPC).

Section 2.2. Identification of the observer

2.2.1. Principle

Third party observations may be anonymous (" Notice from the European Patent Office dated 5 July 2017 concerning the filing and processing of third party comments under Article 115 EPC », OY 2017, A86).

2.2.2. Special case of opposition

However, in order to avoid any misuse of procedure, the observations of anonymous third parties during an opposition procedure are declared inadmissible (T146 / 07) and more generally during a procedure inter partes (T1336 / 09).

Section 2.3. Language and form

2.3.1. Language

Observations must be in one of the official languages of the EPO (R114 (1) EPC, " Notice from the European Patent Office dated 5 July 2017 concerning the filing and processing of third party comments under Article 115 EPC », OY 2017, A86).

The provisions of theA14 (4) EPC do not apply because a third party observation must not be submitted within a specified period.

If a non-anonymous third party submits an observation in another language, the EPO invites him to produce a translation into an official language of the EPO (" Notice from the European Patent Office dated 5 July 2017 concerning the filing and processing of third party comments under Article 115 EPC », OY 2017, A86).

Supporting documents, for example citations from the state of the art, may be written in any language. The EPO may, however, request the third party to provide a translation into one of the official languages. If the required translation is not filed within the prescribed time limit, the EPO may disregard the observation and / or the supporting document (" Notice from the European Patent Office dated 5 July 2017 concerning the filing and processing of third party comments under Article 115 EPC », OY 2017, A86).

2.3.2. Time to present a third party observation

It is possible to make an observation if proceedings are pending before the EPO (A115 EPC, " Notice from the European Patent Office dated 5 July 2017 concerning the filing and processing of third party comments under Article 115 EPC », OY 2017, A86).

2.3.3. Form

Comments must be in writing (R114 (1) EPC).

Comments may also be filed:

  • electronically (" Decision of the President of the European Patent Office dated 10 November 2015 concerning the electronic filing of documents », OJ 2015, A91art 1 (1)) or
  • by fax, but confirmation may be requested by invitation of the EPO ("Decision of the President of the European Patent Office dated 20 February 2019 concerning the filing of patent applications and other documents by telefax", OJ 2019, A18). If this confirmation is not received in time, the observations are deemed not presented.

A PDF form and an online submission form are available on the EPO website (" Decision of the President of the European Patent Office dated 10 May 2011 concerning the filing of comments by third parties under Article 115 EPC via an electronic form », OY 2011, 418 and Notice from the European Patent Office dated 5 July 2017 concerning the filing and processing of third party comments under Article 115 EPC », OY 2017, A86) but this is not mandatory.

Section 2.4. Representation

There is no provision for an exception for representation for persons meeting the conditions of theA133 (2) EPC (ie if they have neither their domicile nor their seat in a Contracting State).

But well ... as the observations can be anonymous (see above) ...

Section 2.5. contents

Observations should address issues of patentability (A115 EPC) in the broad sense such as clarity, sufficiency of description or inadmissible amendments (EV Guidelines 3).

The questions of form are not concerned by the observations of third parties (" Notice from the European Patent Office dated 5 July 2017 concerning the filing and processing of third party comments under Article 115 EPC », OY 2017, A86)

Section 2.6. Period

2.6.1. Principle

Observations may be made during any procedureafter the publication of the application (A115 EPC).

For example, these observations are possible during:

  • the issuing procedure;
  • the opposition procedure (T156 / 84);
  • the limitation procedure;
  • proceedings before the Grand Chamber (A10 RPGCR, ex. revision procedure).

2.6.2. Date on which no further observations can be made

Third party observations may be submitted until the decision (CV Guidelines 6.1) because the examining division may resume the examination at any time up to grant (R71bis (2) EPC).

As the observer is not a party to the proceedings, it therefore seems that observations can not be considered as late in the sense of theA114 (2) EPC and the EPO must therefore consider them (T156 / 84).

Comments made after the closure of the procedure are not taken into consideration, but are included in the file (part not open to the public, EV Guidelines 3).

2.6.3. Misuse of the proceedings - opposition

Nevertheless and as indicated above, in order to avoid any abuse of procedure, the observations of anonymous third parties during an opposition procedure are declared inadmissible (T146 / 07) and more generally during a procedure inter partes (T1336 / 09).

Section 2.7. Procedure

The EPO confirms to the third party the good reception of its observations, but does not inform it of the measures of instruction taken in connection with these observations (EV Guidelines 3): to be aware of the measures taken, the third party may have recourse to the public inspection of theA128 (4) EPC ( ' Notice from the European Patent Office dated 5 July 2017 concerning the filing and processing of third party comments under Article 115 EPC », OY 2017, A86)

The observations are then transmitted without delay to the applicant or the holder who can then take a position on them (R114 (2) EPC).

If the applicant / proprietor is invited to take a position within a specified time, but does not do so, the application / patent will be deemed withdrawn (A94 (4) EPC or R100 (3) EPC). If the opponent is asked to take a position within a specified time, but does not do so, there is no sanction.

The competent division then takes a position on the relevance of the comments in the next notification (" Notice from the European Patent Office dated 5 July 2017 concerning the filing and processing of third party comments under Article 115 EPC », OY 2017, A86).

If the observations mention a prior art "non-document" (former use), this prior art will not be taken into consideration (EV Guidelines 3):

  • if the plaintiff or owner challenges it;
  • if one can reasonably put one's existence in doubt.

These observations are part of the file and are open to public inspection: a third party can not request that his observations be treated confidentially. If need be, the third party is informed of this impossibility (Directives A-XI 2.1).

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