PA 08/2012: Making third party observations

WARNING: Although the information which follows was correct at the time of original publication in the PCT Newsletter, some information may no longer be applicable; for example, amendments may have been made to the PCT Regulations and Administrative Instructions, as well as to PCT Forms, since the PCT Newsletter concerned was published; changes to certain fees and references to certain publications may no longer be valid. Wherever there is a reference to a PCT Rule, please check carefully whether the Rule in force at the date of publication of the advice has since been amended.

Q: I frequently file PCT applications on behalf of a corporate applicant, and try to keep abreast of patent applications, filed by competitors, which are related to the product line that the company I work for specializes in. I recently noticed that some relevant prior art of which I was aware had not been indicated in the published ISR of a PCT application filed by a competitor, and would like to draw this to the attention of the applicant and national Offices before any patents are granted. I have heard that a new third party observation system has been introduced into the PCT procedure – please could you explain to me how I can notify interested parties of the prior art using this system? Will the applicant be entitled to comment on any such observations?

A: Since 2 July 2012, it is now possible, during the international phase of PCT processing, for third parties to submit to the International Bureau (IB) observations referring to prior art which they believe to be relevant to the question as to whether the invention claimed in an international application is novel and/or involves inventive step, in a similar way to that which is permitted under many national systems. Such third party observations can be made at any time from the date of publication of the international application until the expiration of 28 months from the priority date and, for the moment, they are being limited to issues of novelty and inventive step only. No fee is payable for the use of this service

If you wish to make an observation as a third party, you must submit it through WIPO’s ePCT system, using the public services option, either by logging in directly to ePCT public services, or via a link on the bibliographical data tab of the published international application in PATENTSCOPE (“Submit Observation”) (note that the "Submit Observation" tab will only appear for international applications in respect of which the above-mentioned 28-month time limit has not yet expired). Either way, if you don’t already have a WIPO user account, you will need to create one to log in to ePCT public services and make your observation – to do this, go to: https://pct.wipo.int/LoginForms/epct.jsp and click on the link “Create an account” under ePCT public services (see below).

ePCT

Once logged in to ePCT public services, you should select the “Search IA” tab and enter the relevant international application number and its international filing date. From the view of the international application which opens, you then select the “Submit Observation” tab. Alternatively, click on the link provided in the bibliographic data tab of the PATENTSCOPE view of the international application and you will be directed straight to the "third party observations" tab for that international application (this will be via a login screen if you are not already logged in). Any submission made by third parties other than by using this service (for example, on paper or by uploading a PDF file) will normally not be treated as an observation and will not be visible on the file of the international application, whether for the applicant, Offices or publicly through PATENTSCOPE.

Although you need to identify yourself to the IB when logging in to your WIPO user account, you can indicate, when submitting an observation, that you would like the observation to be published anonymously, in which case the IB will not reveal any details about you to the public, the applicant, any International Authority or any designated Office. Note that any one person may only submit a single observation per international application, and, once submitted, it cannot be retracted or modified via the online system. Furthermore, there is a current overall upper limit of 10 third party observations per international application.

Observations may be entered in any language of international publication (noting that the IB will not provide translations so, if you can write in several languages, you should consider which one is most likely to be understood by the applicant and Offices of States which you are particularly interested in), although titles and uploaded copies of prior art documents should normally be in their original language (you can also upload a translation of a document if you wish to do so). You can cite up to 10 documents, published before the priority date (or having an earlier filing or priority date in the case of patent documents), which you consider to be relevant to the novelty or inventive step of some or all of the claims in the international application. You must give certain bibliographic details to properly identify each document (a lookup facility is provided to fill in the details of patent publications) and then indicate the most relevant passages and give a brief indication of how it is relevant. You should preferably upload a copy of the relevant document or section of a document, which will be made available to the applicant, International Authorities and Offices (but, for copyright reasons, will not be made publicly available on PATENTSCOPE).

Each observation will be reviewed by the IB to determine whether it is an observation on the questions of novelty and/or inventive step. If approved, the observation will then promptly be notified to the applicant and any International Authorities which have not yet issued their report, as well as being made available to the public via PATENTSCOPE.
 

The applicant is permitted to respond to observations by third parties (although he/she is not required to do so) until 30 months from the priority date, either through the ePCT system, using the private services option, or by sending a letter to the IB. The applicant’s response will also be promptly made available to International Authorities and for public inspection.

Promptly after the expiration of 30 months from the priority date, the IB will communicate any third party observation and comment by the applicant to the designated Offices which have either asked to receive such information automatically, or have specifically requested it in relation to a national phase entry. It is up to the individual Offices/Authorities to decide whether to take an observation into account.

Note that the person who submitted the observation does not have any additional right to intervene in the processing of the international application, except for any possibilities in the national phase through opposition and similar procedures.

Further information on third party observations has been published in new Part 8 of the Administrative Instructions under the PCT at:

http://www.wipo.int/pct/en/texts/index.html

and instructions on how to submit third party observations can be found in the user guide to the third party observation service at:

http://wipo.int/pct/en/epct/pdf/epct_observations.pdf

For information on the possibility of applicants or their representatives to submit observations on closest prior art and to cite and submit copies of related documents, see item (1)(b) (ePCT private services) under the heading “ePCT Update,” above.