Third party observations allow interested parties to submit arguments and evidence against a pending patent application if they believe the granted patent would pose a problem to freedom to operate or if they believe the pending claims of the patent application are not valid. If successful, the patent application could be refused or may result in the applicant having to amend their claims, thereby limiting the scope of protection.

When can third party observation be submitted?

Third party observations can be submitted after a patent application is published and up until it is granted. Therefore, even if the examiner intends to grant a patent, third party observations can still be filed and will be taken in account providing the observations raise serious questions over the patentability of the claimed invention.

Who can submit third party observations?

Any interested party, with the exception of the applicant, can file third party observations. Advantageously, and unlike opposition proceedings, third party observations can be filed anonymously.

On what grounds can third party observations be based?

Although lack of novelty and/or inventive step are the most common observations, third-party observations may also raise issues relating to:

• Patentability – the claimed invention is directed to matter that is excluded from patentability
• Clarity – the claims are unclear
• Insufficiency – the application does not describe the invention in enough detail such that it can be carried out by others.
• Lack of unity – the application contains more than one invention.
• Added matter – the application contains subject matter that was not present in the application as filed.

What happens after third party observations are filed?

All observations, including those submitted anonymously, become part of the official file and are promptly shared with the applicant or patent holder, who may provide a response. If the observations raise doubts about the patentability of the invention, in whole or in part, the examining or opposition division will consider them in the next official action.

Why third party observations matter – and why you should consider them

As outlined above, third party observations are a strategic, cost-effective tool for managing competitive risk and safeguarding freedom to operate. Whether you’re monitoring a key competitor or concerned about a patent application that could block your commercial plans, third party observations provide a valuable opportunity to engage proactively in the patent process. Below are several key benefits:

• Prevent Competitor Patents from Gaining Undue Scope

Third party observations allow you to challenge the validity of a pending patent application before it is granted, particularly where claims appear overly broad, unclear, or unjustified. By submitting relevant prior art or legal arguments (e.g., lack of novelty, inventive step, or added matter), you can help ensure that the patent is only granted for genuinely novel and inventive subject matter. This can significantly limit the commercial impact of a competitor’s patent portfolio from the outset.

For professional advice on third party observations, please get in touch to speak to one of our patent attorneys.