The effectiveness of third-party observations at the European Patent Office (EPO) is seen by some as low-impact, easy for examiners to ignore, and ultimately less likely to materially affect the outcome than post-grant options such as oppositions or national proceedings. That perception, where it exists, is misplaced. When used appropriately, third-party observations can influence examination by directing attention to specific objections, encourage narrower claim scope, and create a more difficult enforcement position for a patentee later, if the application goes on to achieve grant.

Under Article 115 EPC, any third party may file observations on the allowability of a published European patent application. The third party does not, however, become a party to the proceedings and has no right to direct how examination then proceeds. That makes the timing, form and focus of the submission particularly important: the observation must be clear enough, and useful enough, to be taken up by the examining division on the file.

In many cases, the negative perception stems from experience with third-party observations that were not handled effectively. Common examples include observations filed late in examination, objections that are not tied to the claims, overly long or unfocused submissions, material that requires the examiner to do the work of constructing the case themselves, and arguments that are not aligned with EPO examination practice. This article outlines how to use third-party observations more effectively by avoiding the common issues that can limit their impact.

Timing matters

In theory, third-party observations can be filed up until the day the application is forwarded to grant. That includes the period after a Rule 71(3) communication has issued. In practice, however, leaving matters that late increases the risk that the application will simply be forwarded to grant, with the result that the observations need not be substantively considered. Even where they are considered, observations filed later in examination can be less likely to alter the examiner’s view or affect the course of examination. Observations are more likely to have a beneficial effect when filed while the examiner is still forming a preliminary view of the case. At that stage, there is a better chance that the points raised will feed into the next office action and influence the course of examination.

This is especially important where the issues raised depend on the examiner’s evaluative judgment. Many objections are not entirely clear-cut, for example where they turn on the interpretation of the claims or of the prior art disclosure. The earlier a point is put before the examiner, the more likely it is to shape that judgment before the examiner’s assessment has become more fixed. Accordingly, while a third party may receive the benefit of any doubt when heard early in the proceedings, once an application is closer to grant, the balance may more likely favour the applicant.

Be claim-specific

Another common mistake is to assume that simply placing a document on the file is enough, or that it is sufficient merely to assert that, in view of the document, a claim lacks novelty or inventive step. Usually, it is not. A good objection is one that is tied directly to the wording of the claims. Broad attacks on the invention or application as a whole are much less effective than a focused explanation of why particular claim language is anticipated, obvious, unsupported, unclear, or includes added subject-matter. The stronger observations are those that show, feature by feature where necessary, exactly how the point arises and why it matters.

It is also important not to assume that the examiner will automatically see the relevance of a document in the same way that the third party does. Parties who know the technology well often fill in gaps using their own specialist knowledge, sometimes without even realising that they are doing so. Unless that relevance is made explicit, and tied clearly to the claims under examination, it becomes easier for the examiner to move on. A good objection does not merely identify a problem, but presents the objection in a clear, claim-focused form that the examiner can easily adopt, as discussed further below.

Less is often more

A small number of strong points will usually outperform a long and unfocused submission. Third-party observations are not the place for scattergun attacks or for trying to say everything that could possibly be said. That means concentrating on the objections most likely to gain traction and resisting the temptation to overload the examiner with documents, fallback arguments, and lengthy technical discussion. A submission that tries to cover every possible angle often ends up diluting its strongest points. By contrast, a focused submission makes it easier for the examiner to see the strongest points and deal with those directly. Care must, however, be taken not to strip the reasoning out of the submission, but rather to keep it disciplined. The examiner should be able to see, without unnecessary effort, what the key objection is, what document or passage supports it, and why it matters to the claims as drafted.

Make it easy for the examiner

A general principle running through all of this is to reduce friction. The easier it is for the examiner to pick up, understand and act on the point, the more likely it is to have an effect. As noted above, this means explaining clearly why the cited material matters and presenting the objection in a form that could readily be adopted in an office action. The examiner should not have to reconstruct the argument, search for the key disclosure, or work out how the document maps onto the claims.

This is one of the main reasons why self-filed observations can disappoint. The issue is often not that the examiner has ignored them out of hand, but that the submission has not been presented in a way that fits naturally into the examiner’s assessment. Well-prepared third-party observations remove unnecessary effort and give the examiner something they can use, rather than something they must first decode.

Work within EPO practice

It is also important to remember that the argument should be framed in a way that aligns with EPO examination practice. Points that may seem persuasive from a technical or commercial perspective will not necessarily gain traction if they are not expressed in a way that makes clear their relevance under the applicable EPO legal and procedural framework. This can be a particular problem where observations are drafted without input from a European patent attorney. Also, arguments imported from approaches used in other jurisdictions may similarly fail to align clearly with the EPO’s approach to examination.

An effective way to do this is to support objections by reference to the EPO Guidelines for Examination. Examiners are expected to apply the Guidelines, and arguments that are made within that framework are often easier for them to engage with and adopt. References to the Guidelines can also help show that the third party is not simply advancing its own preferred reading of the case but is identifying an objection in terms consistent with established examination practice at the EPO.

When not to file third-party observations

That said, third-party observations may not always be the best option. Where the arguments are likely to be complex, or depend on subtle points of interpretation, expert evidence, or detailed technical analysis, it may be better to preserve the point for a post-grant opposition or another contentious route.

A further and potentially significant drawback is that filing third-party observations may put the applicant on notice that an opposition is likely. That, in turn, may prompt defensive action, including the filing of divisional applications that might not otherwise have been pursued had no challenge been apparent on the horizon. This will be less of a concern in cases where divisional filing strategies and oppositions are common in any event.

Conclusion

Third-party observations are therefore not a substitute for opposition, and they are not suitable for every case. However, when filed early, focused tightly on the claims, and framed in terms that fit EPO examination practice, they can be a valuable option for influencing claim scope before grant and improving the third party’s position if later proceedings become necessary.

This article was written by Senior Associate, Dr Alex Colman. If you would like to discuss EPO third party submissions, or other aspects of EPO examination, please contact alex.colman@wilsongunn.com or your usual Wilson Gunn attorney.