Third Party Observations

What are Third Party Observations and should I be considering them?

As part of your competitor patent monitoring, you will likely be monitoring patent applications as they proceed through examination.  In some cases, you may be particularly concerned about how examination is progressing in the European Patent Office, for example, you may be aware of a relevant prior disclosure that the Examiner does not appear to have considered, or you may believe that the Examiner has misunderstood an aspect of the invention.  In this case, you may want to consider writing to the Examiner to point our key issues that you believe the Examiner should consider during examination, and the European Patent Office has a mechanism for doing this.  Such observations are known as Third Party Observations.

 

Who can file observations?

Any “third party” can file observations.  This means that the person filing the observations must not be a party to the proceedings before the European Patent Office (EPO).  Consequently, the Applicant/Proprietor for a European patent application cannot file observations regarding their own patent application/patent.

The observations can be filed anonymously.

 

When can observations be filed?

Observation may be filed at any time following publication of a European patent application, whilst proceedings are still pending.  Observations may be filed during examination, opposition proceedings and during appeal proceedings.

Observations received during the examination phase, after dispatch of the intention to grant but before the decision to grant has been handed over to the EPO postal service will be considered by the examining division.  If they are considered relevant, the examining division will resume examination.

Observations received after the decision has been pronounced in oral proceedings or issued in written proceedings and handed over to the EPO postal service, will be included in the file without taking note of their content.

Observations received once proceedings are no longer pending will not be taken into account.

 

Does the Third Party become a party to the proceedings?

No, the person who files the observations does not become a party to the proceedings.

The EPO will send the third party an acknowledgment of the receipt of their observations (if these were not filed anonymously).  However, the EPO does not specifically inform the third party of any action it takes in response to the observations.  The outcome of the evaluation by the competent division will briefly be indicated in the respective office action from the EPO (e.g. in a communication or in the intention to grant) and will thus be visible to the public in the online register.

Thus, to see how the Examiner deals with the third party observations, you will need to regularly review the online file.  If you do not agree with the Examiner’s assessment of your observations, it is possible to file further observations, which will be treated in the same manner as your previous submission(s).

 

What objections can be raised in observations?

Observations must be filed in writing in an official language of the EPO (i.e., in English, French or German).  The observations must include a statement of the grounds explaining why a patent should not be granted.

The observations may be directed to why the European patent application:

- lacks novelty;

- lacks an inventive step;

- lacks clarity;

- lacks sufficiency of disclosure;

- lacks patentability; and/or

- contains unallowable amendments.

 

Supporting documents

Documentary evidence and, in particular, publications submitted in support of the observations may be filed in any language.  However, the EPO may request that a translation into one of its official languages be filed within a period to be specified, otherwise the evidence will be disregarded.

 

What happens once observations have been filed?

Once filed, observations become part of the file and are open for public inspection (except for when observations are received after proceedings are no longer pending).  In addition, the observation are communicated to the Applicant/Proprietor.

The examination, opposition or appeal division will consider the observations and if the observations are considered to raise objections relevant to the grant of a patent, then the examining, opposition or appeal division will take them into account in the official  communication.

The Applicant/Proprietor may comment on the observations regardless of whether the examining, opposition or appeal division takes them into account in the next office action.

If the observations relate to alleged prior art available other than from a document, e.g. from use, this is taken into account only if the alleged facts either are not disputed by the Applicant/Proprietor or are established beyond reasonable doubt.

 

Why file Observations?

Filing observations is cheaper than opposing a patent after it has granted.  Therefore, if you are aware of a prior art document which has not been cited during examination, then it is a cheap and easy way to have such a document considered by the EPO.  However, since the person filing the observations does not become a party to the proceedings, they are not given an opportunity to comment on any rebuttal filed by the Applicant/Proprietor and will need to be prepared to file further observations if necessary  Third party observations can be useful if it looks like the Examiner has misunderstood the invention or a the extent of disclosure of a prior art document.  They are also a useful way of drawing the Examiner’s attention to prior art disclosures that they may not ordinarily be aware of – such as exhibition at a trade show.  In addition, third party observations can raise grounds that are not available in opposition, such as clarity.

 

Why not file Observations?

As mentioned above, since the person filing the observations does not become party to the proceedings, it may be advantageous to instead oppose a patent once granted such that the opponent becomes a party to the proceedings and can respond more easily to any rebuttal filed by the applicant(s) or proprietor(s).

Furthermore, sometime Examiner’s do not raise objections corresponding to the arguments filed in third party observations and it can look like your submissions have been disregarded.  Filing arguments during opposition proceedings means that the Examiner has to explain why they do not consider your arguments persuasive, giving you a chance to respond.

If you think you may be interested in filing third party observations and would like some advice, please do not hesitate to contact us at: mail@mathisen.co.uk