Practical Advice
Third-party observations and their effects
Q: I have a positive international search result and my PCT application has been published but I have now received, from the International Bureau, an observation from a third party whose name is not mentioned. What does this imply? Will I have any possibility to comment on the observation?
A: Third party observations refer to observations or comments made by any interested party, including other applicants, competitors, or the public, regarding a published PCT application where they believe that the claimed invention is either not new (lacks novelty) or is obvious (lacks an inventive step).
After publication of an international application, third parties have the opportunity to submit observations to the International Bureau (IB) through the ePCT system up until 28 months from the priority date. Each person may only make a single observation on any particular application. Ten observations may be submitted on any given application.
Each observation must include at least one citation, up to a maximum of ten citations, referring to documents published before the international filing date or patent documents having a priority date before the international filing date. The citations should be accompanied by a brief explanation of how each document is relevant to the novelty and/or inventive step of the claimed invention. The observation should preferably be accompanied by a copy of each cited document. The person submitting the observation may choose to remain anonymous.
The third-party observation service can be accessed either directly in ePCT without strong authentication or while browsing a published international application in PATENTSCOPE . Its legal basis is in Part 8 of the Administrative Instructions under the PCT. Further details relating to this service concerning the format, length of observations, language, etc. can be found in a user guide available at:
https://www.wipo.int/export/sites/www/pct/en/epct/docs/epct_observations.pdf
The IB checks each observation but only to ensure that it concerns the question of novelty and/or inventive step. It does not check the validity of the observation in substance. If the observation concerns issues such as ownership of the invention, industrial applicability or sufficiency of the disclosure, the IB may reject it and notify the third party accordingly. If accepted, the observations are made publicly available on PATENTSCOPE in the same section as the international search report. Only the observation is visible to the general public. For reasons of copyright, any prior art document uploaded with the observation is made available only to the applicant, International Searching and Preliminary Examining Authority (where relevant) and designated or elected Offices.
The IB immediately notifies the applicant of the submission of any such observations and sends a copy of the uploaded prior art document to both the applicant and the designated Offices. The IB also sends a copy of the observations and cited documents for consideration to the International Searching Authority (ISA) or the International Preliminary Examining Authority (IPEA), but only if the application is still pending before the Authority concerned.
In your case, the international search has already been completed. The ISA will therefore not be informed about the third-party observation and the search results will not be reviewed. If you file a Chapter II demand, the IB will make a copy of the observation available to the IPEA which, unless it has already started drawing up the International Preliminary Examination Report, will take the observations into account.
You have the option of commenting on the observation during the international phase until the expiration of 30 months from the priority date. Your comments must be submitted to the IB, preferably by uploading a PDF document of type “Applicant Comments on Third Party Observation” via ePCT when signed in with strong authentication. Comments must be submitted in English, French or the language of publication of the international application. Any comments submitted will be made available to the public on PATENTSCOPE. As third parties can submit observations until 28 months following the priority date, the 30-month time limit to reply ensures that you have time to react before entering the national phase and to have your response made publicly available within that period. If you miss this time limit, you might still have the opportunity to submit further arguments in the national phase as described below.
There is no requirement to submit a Chapter II demand for you to be able to comment on the observation. In any event, the IB will make the observation and the prior art documents available to the designated Offices promptly after the expiration of 30 months from the priority date. Applicants entering the national phase in the United States of America are obliged to indicate in the Information Disclosure Statement relevant documents which they have been made aware of. It is then up to the designated Offices to decide whether or not to take the document into account for national phase processing. You may, in addition, submit further arguments in the national phase under the applicable national laws and procedures, including any similar third-party observation systems.
For further information on third party observations please refer to the PCT FAQ at:
https://www.wipo.int/pct/en/faqs/third_party_observations.html
and the “Practical Advice” in PCT Newsletter No. 07-08/2012 at:
https://www.wipo.int/pct/en/newslett/practical_advice/pa_082012.html