Third-party observations

Third-party observations during the PCT procedure

Legal basis

Currently, there is no legal provision (i.e., in the treaties) allowing third-party observations during the PCT procedure.

However, this possibility is offered by WIPO through its ePCT service since July 2012 (Third-party observations via the ePCT service).

Identification of the observer

It is possible to submit anonymous observations (even though the observer’s identity must be provided to WIPO).

Language and form

Language

The language must be one of the international publication languages (any language, not necessarily the one used for the publication of the application in question).

However, WIPO advises submitting observations in a language likely to be understood by the applicant and the offices.

Form

At present, only observations submitted via the PATENTSCOPE ePCT tool (web page) will be considered.

Representation

There appears to be no requirement for representation (nor is there any legal basis for such a requirement).

Persons entitled to submit observations

In principle, any person may submit observations, except the applicant and, where applicable, their representative.

Content

It is possible to submit free-form observations on the various sets of claims.

In addition, the observer may cite up to 10 documents they consider relevant, indicating the most notable passages and/or drawings. A brief explanation is permitted.

Time period

It is not possible to submit observations:

• if the international application has not been published;
• if the 28-month period from the priority date has expired;
• if the application has been withdrawn;
• if the observer has already submitted an observation for this application;
• if more than 10 observations have already been submitted for this application.

Procedure

Once the observation is submitted, it is reviewed by the International Bureau to verify that it pertains to the patentability of the application in question.

Once validated,

• the applicant is notified of the observation;
• the ISA is notified if the search report has not yet been received by the IB;
• the SIS is notified if the preliminary examination report, although requested, has not yet been received by the IB;
• the third-party observation will be made publicly available in the file;
• the designated or elected offices (that have requested to receive this information) will receive the observation and any response from the applicant after the 30-month period from the priority date or if specifically requested in connection with a national phase.

The applicant may respond to the observation until the expiration of the 30-month period from the priority date.

Third-party observations before the EPO

Legal basis

Third-party observations are possible in any procedure before the EPO (Article 115 EPC).

Identification of the observer

Principle

Third-party observations may be submitted anonymously (« Notice from the European Patent Office dated 5 July 2017 concerning the filing and processing of third-party observations under Article 115 EPC« , OJ 2017, A86).

Special case of opposition

However, to prevent abuse of procedure, anonymous third-party observations submitted during an opposition procedure are deemed inadmissible (T146/07) and, more generally, during inter partes proceedings (T1336/09).

Language and form

Language

Observations must be filed 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 observations under Article 115 EPC« , OJ 2017, A86).

The provisions of A14(4) EPC do not apply, as third-party observations are not required to be filed within a set time limit.

If a non-anonymous third party files an observation in another language, the EPO will invite them to submit 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 observations under Article 115 EPC« , OJ 2017, A86).

Supporting documents, such as citations from the prior art, may be submitted in any language. However, the EPO may request the third party to provide a translation into one of the official languages. If the required translation is not submitted within the set 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 observations under Article 115 EPC« , OJ 2017, A86).

Timing for filing third-party observations

Observations may be filed if a proceeding is pending before the EPO (A115 EPC, « Notice from the European Patent Office dated 5 July 2017 concerning the filing and processing of third-party observations under Article 115 EPC« , OJ 2017, A86).

Form

Observations must be filed in writing (R114(1) EPC).

Observations may also be filed:

• electronically (« Decision of the President of the European Patent Office dated 10 November 2015 on the electronic filing of documents« , OJ 2015, A91, Art 1(1)) or
• by telefax, but confirmation may be requested at the invitation of the EPO (« Decision of the President of the European Patent Office dated 20 February 2019 on the filing of patent applications and other documents by telefax« , OJ 2019, A18). If such confirmation is not received within the time limit, the observations shall be deemed not to have been filed.

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 on the filing of third-party observations under Article 115 EPC via an electronic form« , OJ 2011, 418 and « Notice from the European Patent Office dated 5 July 2017 concerning the filing and processing of third-party observations under Article 115 EPC« , OJ 2017, A86), but this is not mandatory.

Representation

There are no provisions providing for an exception to representation for persons meeting the conditions of A133(2) EPC (i.e., if they have neither a residence nor a principal place of business in a Contracting State).

But then again… since observations may be anonymous (see above)…

Content

Observations must relate to issues of patentability (A115 EPC) in a broad sense, such as clarity, sufficiency of disclosure, or inadmissible amendments (Guidelines E-V 3).

Formal matters are not covered by third-party observations (« Notice from the European Patent Office dated 5 July 2017 concerning the filing and processing of third-party observations under Article 115 EPC« , OJ 2017, A86).

Period

Principle

Third-party observations may be filed during any proceeding after publication of the application (A115 EPC).

For example, such observations are possible during:

• the examination procedure;
• the opposition procedure (T156/84);
• the limitation procedure;
• proceedings before the Enlarged Board of Appeal (A10 RPBA, e.g., review proceedings).

Date after which no further observations may be filed

Third-party observations may be filed until the decision (Guidelines C-V 6.1) since the examining division may resume examination at any time until grant (R71bis(2) EPC).

Since the observer is not a party to the proceedings, it appears that observations cannot be considered late under A114(2) EPC, and the EPO must therefore take them into account (T156/84).

Observations submitted after the closure of the proceedings are not considered but are included in the file (non-public part, Guidelines E-V 3).

Abuse of procedure – opposition

Nevertheless, as indicated above, to prevent any abuse of procedure, observations filed by anonymous third parties during an opposition procedure (T146/07) and more generally during inter partes proceedings (T1336/09) are deemed inadmissible.

Procedure

The EPO acknowledges receipt of the observations to the third party but does not inform them of any investigative measures taken in connection with those observations (Guidelines E-V 3): to learn of any measures taken, the third party may request public inspection under A128(4) EPC (« Notice from the European Patent Office dated 5 July 2017 concerning the filing and processing of third-party observations under Article 115 EPC« , OJ 2017, A86).

The observations are then promptly forwarded to the applicant or proprietor, who may comment on them (R114(2) EPC).

If the applicant/proprietor is invited to comment within a specified period but fails to do so, the application/patent will be deemed withdrawn (A94(4) EPC or R100(3) EPC). If the opponent is invited to comment within a specified period but fails to do so, no sanction applies.

The competent division then addresses the relevance of the observations in the next communication (« Notice from the European Patent Office dated 5 July 2017 concerning the filing and processing of third-party observations under Article 115 EPC« , OJ 2017, A86).

If the observations cite non-documentary prior art (e.g., prior use), such prior art will not be taken into account (Guidelines E-V 3):

• if the applicant or proprietor contests it;
• if its existence can reasonably be doubted.

These observations form part of the file and are therefore open to public inspection: a third party cannot request that their observations be treated confidentially. If applicable, the third party is informed of this impossibility (Guidelines A-XI 2.1).