Posted on 15/2/2013

Third-party observations now possible for international patent applications

The filing of third-party observations is permitted by some Patent Offices. This can be a useful way of bringing to the attention of the applicant and the Patent Office relevant prior art that may cast doubt on the patentability of an invention.

This can result in the scope of protection of a patent granted being limited or a patent being refused or the application being abandoned by the proprietor. Therefore third-party observations are useful if there is a pending patent application whose claimed invention may conflict with your own commercial interests.

Traditionally it was not possible to file third-party observations during the International phase of an International patent application filed under the PCT; it only being possible to file third-party observations at the individual Patent Offices which permit the filing of third-party observations during the subsequent national and regional phases of that application.

However, it is now possible to file third-party observations during the International phase of the so-called PCT application. This is an effective way of not only bringing relevant prior art to the attention of the International Authorities and the applicant, but also the various national and regional Patent Offices which have asked to receive such information. The observations are also made publicly available. This can therefore reduce the subsequent cost of filing third-party observations at several different Patent Offices.

Third-party observations can be filed in a ten month window which commences at publication of the International patent application at 18 months from the priority date, or filing date if there is no priority claim. The applicant has the option to reply for an additional two months during the International stage, which therefore finishes at the 30 month deadline. The reply, if filed, is then also sent to the various Patent Offices and is made publicly available.

Each third-party can only file one set of observations during the International phase. Only a maximum of ten independent third-party observations can be made.

The third-party does not have any additional right to intervene in the processing of the International patent application, save what may be possible in the subsequent national/ regional phase through opposition and similar procedures. The observations can be filed anonymously.

As a result of this change it has become more important to monitor your competitor’s patent filings. In this respect we can provide a patent watching service to monitor the patent filing activities of your competitors, or patent applications filed in a particular field. This can bring to your early attention potential problematic patent application publications, which will enable you the possibility of filing third party observations at such an early stage of the relevant patent application proceedings. Third party observations provide an inexpensive way of influencing examination of a patent application and may help you avoid a potential infringement situation arising. This may negate the subsequent need for the more expensive later procedures of opposing, or revocation of the patent once granted.

For more information on patent watching services, or for preparation and filing of third-party observations on International or other patent applications, please do not hesitate to contact us.

Wilson Gunn