Third party observations have in the past been referred to by some as the poor man’s opposition; in most countries they bear no official fee and are relatively simple to submit, especially if you are already aware of the art you wish to include. But do not let the nickname fool you; the opportunity to file observations on a competitor’s patent application can be very useful, especially if you are already aware of a piece of knock-out prior art that you believe will destroy the novelty of the patent application in question.
Conversely, post grant oppositions can quickly become very expensive with multiple rounds of correspondence often being required. However, this prolonged involvement does give the added benefit of enabling the third party to become a party to the proceedings, which may be necessary to ensure that the implications of the cited art on the inventive step of the claimed invention are fully appreciated.
Nevertheless, there is definitely a place for third party oppositions in one’s patent armoury, as can be seen by the relative popularity of the newly broadened preissuance submissions provision in the America Invents Act, where approximately 270 submissions were made in the first three months. The changes, effective from 16 September 2012, allow third party submissions to be filed at any time before the earlier of a) the date that the notice of allowance is mailed or b) the later of the first rejection under 35 U.S.C. 132 of any claim during examination or six months from first publication of the application.
So how can you file these third party observations? Well the basic requirements are broadly the same across the jurisdictions of the United States, Japan, WIPO, Europe and the United Kingdom. The observations may be filed anonymously, but must include sufficient information to identify the patent application to which the observations relate and, where appropriate, include a copy of the documents being submitted.
In Japan, WIPO, Europe and the United Kingdom, the observations should identify the grounds of patentability on which it is asserted that the submitted documents are relevant. However, in the United States this would be considered a non-compliant submission and would not be processed. For the United States, the preissuance submission may only contain factual statements comparing the invention of the application in question with a concise description of the asserted relevance of each submitted document, i.e. no discussion of patentability may be included.
The process of filing preissuance submissions is further set apart in the US as it is the only one of the above jurisdictions that implements a ($180) fee for filing the observations. However, third parties can take advantage of a fee reduction (to zero) if three or fewer documents are submitted and the submission is the first and only submission made by the party.
The procedure in respect of International patent applications has only been available since July 2012 and has a few quirks of its own. Third party observations can only be made in respect of International patent applications through a WIPO ePCT public services account and a given party is only permitted to file one set of ten documents against a given International patent application. Furthermore, the window for filing these observations runs from publication of the International application until 28 months from the priority date.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking before any action in reliance on it.