• Third-Party Observation: The New Tool to Challenge the Legal Validity of PCT Applications
  • July 4, 2012
  • Law Firm: Jones Day - Cleveland Office
  • In many national and regional jurisdictions, any third party, by so-called third-party observations, may aid its patent office in identifying prior art that might question the patentability of a patent application due to a lack of novelty and/or inventiveness. Recently, the America Invents Act ("AIA") introduced provisions for third-party submissions, effective as of September 16, 2012. Effective July 1, 2012, third-party submissions will now also be codified in the Patent Cooperation Treaty ("PCT") Regulations. The first third-party observations might thus be filed from July 2, 2012 for International Patent Applications during the preliminary international phase.

    Existing National/Regional Regulations on Third-Party Observations

    The purpose of third-party observations is to give members of the general public the opportunity to notify the Patent Office of written state of the art information that might be of relevance for assessing novelty and/or inventiveness. Most patent offices endeavor to search not only written state of the art in the form of patent documents, but also general written documents such as journal articles, web publications, etc. For example, the European Patent Office ("EPO") entered into contracts with a large number of publishers and database providers for non-patent literature ("NPL") to gain access to such documents. The EPO today has access to more than 400 million NPL-documents. However, the search possibilities are still restricted and cannot cover the entire written state of the art. To avoid the situation where an interested third party has to await a grant of a patent to challenge the legal validity of a claimed subject matter via an opposition or a national nullification procedure, third parties now will have the ability to provide information on written state of the art to the patent office during the examination procedure.

    The right of the general public to provide such third-party observations is implemented in such national/regional patent law regulations as the European Patent Convention (Art. 115 EPC) or the German Patent Act (ยง43 (3) (3) PatG). Beginning on September 16, 2012, the AIA will provide for third-party observations with the U.S. Patent and Trademark Office ("USPTO"). In comparison with the European regulations that give a third party the ability to file third-party submissions during opposition procedures-and thus after the grant of a patent-the AIA prior art submission can be filed only before the earlier of (i) notice of allowance or (ii) the later of six months after publication or date of first rejection.

    These provisions all have in common that the party filing the observation does not become a party to the examination procedure. Thus, in comparison with inter partes disputes, the party may not provide additional arguments. This might be, depending on the "quality" of the state of the art, an argument against a third-party observation. If the examining division does not share the arguments of the third party and grants a patent regardless of the filed state of the art, it is also less likely that the granted patent will be later revoked solely based on this state of the art in after-grant procedures such as oppositions or nullification actions.

    Further, third-party observations are restricted to written state of the art information, as it would go beyond the scope of the procedure to assert other forms of state of the art, including oral descriptions or public use. This state of the art would require further time-consuming investigations by the examining division and would thus lead to an undue delay of the examination procedure. By limiting third-party observations to written state of the art, the potential misuse of the procedure by a third party to slow down the examination of applications is avoided.

    Third-Party Observations Under the PCT

    During the February 2012 Meeting of International Authorities under the PCT held in Canberra, Australia, it was announced that third-party observations may be filed for PCT applications. The existing PatentScope system will be used to allow the filing in electronic format with the International Bureau seated in Geneva, Switzerland.

    The modifications to the Administrative Instructions-newly added sections 801 to 805-which come into force on July 1, 2012, are available at www.wipo.int/export/sites/www/pct/en/texts/pdf/ai-14.pdf.

    Because July 1 falls on a Sunday, it is assumed that the filing system will not be available before July 2, 2012. Certainly, any time limits for filing these observations (see below) will extend to Monday July 2, 2012 based on Rule 80.5 PCT.

    Third-party observations can be filed at any time between the publication date of the International Application and 28 months from the priority date of the application, and they must be filed in the language of the application. The only exception for the language requirement is that the copies of the submitted prior art documents may be filed in any language. In this regard, the definition of language according to Rule 12.1 PCT should apply-any language that is accepted by at least one receiving Office to file an International Application. It remains to be seen how documents in a language that is not one of these language are handled, especially whether a translation has to be filed and within what time frame.

    In addition to the identification of the application to which it relates and the reference to prior art, the observation must also include a brief explanation of the relevance of each prior art document referred to in the observation and copies of the prior art. The International Bureau may restrict the number of documents that might be filed for each observation. Further, the International Bureau may decide to restrict the number of third-party observations. A total of 10 documents per observation and a total of 10 observations per application was discussed, but the exact number has not yet been determined. Observations filed beyond these total numbers will not be considered. The proposed limitations regarding the number of submissions and number of documents per submission seem to be reasonable and should encourage third-party observations to stay focused on highly relevant documents.

    Thus, third parties should file the observations as soon as possible after having identified the application as well as the relevant prior art. If an interested third party misses the deadline or files the observation after the maximum number of submissions has been reached, he or she would have to file the observation separately with each national/regional office after the nationalization/regionalization of the application, provided that the national law allows for such observations at all.

    The party filing the observation can choose to remain anonymous, meaning that the International Bureau will not reveal any details of the third party's identity to the public, the applicant, or any International Authority or designated Office. Otherwise, third-party observations are open for public inspection. However, this does not cover copies of the prior art documents uploaded through the filing system, which will be made available only to the applicant, the Competent International Authorities, and designated Offices. This restriction is made to avoid any conflicts with copyright laws in the respective jurisdictions.

    After the first third-party observation for an application is received, the International Bureau notifies the applicant immediately. However, subsequent observations will be forwarded to the applicant only after expiration of the 28-month time limit calculated from the earliest priority date. This is also when the International Preliminary Report on Patentability will be established. The applicant may, however, choose to receive immediate notifications of further observations via the ePCT system. This route might be taken to avoid significant costs for applicants who may wish to respond to the observations simultaneously after 28 months from the priority date.

    After receiving the observations, the applicant has the opportunity to file comments on the observations with the International Bureau in English, French, or the language of publication of the International Application until 30 months after the priority date. These comments will be made available for public inspection.

    The International Bureau will communicate any third-party observation and the applicant's comments promptly to the appropriate International Authorities, especially the International Search Authority and/or International Preliminary Examination Authority, provided that the search report/examination report has not yet been established.

    According to a planned change of the Search and Preliminary Examination Guidelines, the International Search Authority must consider the state of the art filed with the observation as if it were part of the field of search. Therefore, the examiner will have to refer to the filed state of the art documents only if he considers them relevant for inclusion in the search report. As long as a filed document was not already found in the search, it will be labeled in the report as "Third-party observation submitted [date]."

    Similarly, the Preliminary Examination Authority has to consider the state of the art filed with the observation as if it were part of the field of search. However, the examiner will have to comment on the state of the art only if he considers worthy of citing.

    Finally, the observations and comments will be forwarded or made available to the designated offices in accordance with Rule 93bis PCT. Thus, in a centralized procedure, the applicant can file one response to the observations instead of having to file responses to the patent office of each designated state separately. However, the designated offices are not obliged to take into consideration the observation or the comments.

    Conclusion

    With the third-party observation system under the PCT, it will be possible to influence the search and/or the examination procedure of an International Patent Application at a very early stage. The system is especially useful in cases in which the third party is in possession of close, clearly relevant prior art.

    The submitting party has to keep in mind that there is no further influence of the submitting party on the examination procedure, however. Thus, potentially relevant prior art may be "burned" or, rather, "exhausted" in view of potential after-grant proceedings, especially in the case of prior art documents that are not immediately relevant.

    The main advantage of the PCT third-party submission compared to national third-party submissions is the centralized PCT system. It is now possible to file one third-party observation that will be effective in states that do not offer the ability to submit prior art or challenge a patent (or where it is expensive or burdensome to do so) and for states that do not carry out an examination before granting or registering a patent. Although the national offices are not required to take the submission into consideration during their examination procedure, the state of the art documents will become part of the official file and accessible for others to challenge the legal validity of the application as granted patent. Also, it becomes possible to add to the file wrapper unpublished state of the art that might only be partly relevant for the assessment of patentability of the International Patent Application-for example, state of the art under Article 54 (3) EPC being relevant only for assessing the novelty of a claimed subject matter-but that might become fully relevant prior art for later filed applications, such as continuation-in-part applications in the U.S.

    In summary, the new regulations in force from July 1, 2012 provide for ample opportunities for third parties to question the patentability of a claimed subject matter of an International Patent Application at an early stage, even making use of the centralized procedure of the PCT.