[author: Courtenay C. Brinckerhoff]

As of July 2, 2012, third parties can submit “observations” in published PCT applications via the ePCT Public Service system. It is interesting to compare this service with the expanded ability of third parties to make Preissuance Submissions under new 35 USC § 122(e) (created by the America Invents Act), which takes effect on September 16, 2012. As with that program, only time will tell how many third parties will make the effort to bring potentially relevant prior art to the attention of patent examining authorities.

ePCT Third Party Observations

According to the WIPO guidance document, the ePCT Third Party Observations service is designed to permit third parties to submit information that they believe shows that the invention claimed in a PCT application “is either not new (lacks novelty) or is obvious (lacks inventive step).” 

WIPO highlights the following as “key points” of the system:

  • Observations can be submitted from the international publication date until 28 months from the priority date
  • A person may only make a single observation on any particular application
  • An observation consists of a list of at least one and up to a maximum of ten prior art citations, together with a brief indication of how each one is considered to be relevant to the novelty or inventive step of the claimed invention.
  • Preferably, the observation should be accompanied by a copy of cited document, which will be made available to the applicant and Offices, but will not be made publicly available on PATENTSCOPE
  • A maximum of ten observations may be submitted on any particular application
  • The applicant is permitted to respond to observations by third parties until 30 months from the priority date, but is not required to do so
  • The observations and any responses by the applicant will be notified to the applicant, ISA (if the international search report has not yet been received by the IB), IPEA (if applicable and the international preliminary report on patentability has not been received by the IB) and DOs
  • It is up to the individual Offices to decide what use to make of an observation. The person who submitted the observation does not have any additional right to intervene in the processing of the international application, save what may be possible in the national phase through opposition and similar procedures
  • The observations (excluding copies of cited documents) and any responses by the applicant will be made publicly available on PATENTSCOPE
  • Submissions made by third parties other than through this system (for example on paper or by uploading a PDF file) will normally not be treated as an observation and will not be visible on the file of the international application, whether for the applicant, Offices or publicly through PATENTSCOPE
  • The third party observation service is not for use by the applicant or his representatives. However, an equivalent function is provided as an “action” in ePCT private services called “observations on close prior art”. This function is available at any time up to 30 months from the priority date, including before international publication, and has no limit on the number of observations which can be made for a particular international application

Interesting Tidbits

As I was reviewing the instructions for making a Third Party Observation, the following tidbits caught my attention:

  • The Third Party can choose to keep its identity hidden from the applicant and the public, but must check the appropriate box to do so
  • The system permits a maximum of 500 characters to explain the relevance of the cited documents
  • Each cited reference can be uploaded as up to three documents of a maximum size of 20 MB each
  • No fee is required

What Happens Next

As explained by WIPO, after a Third Party Observation has been accepted (e.g., has been reviewed for formalities) the following will occur:

  • The applicant will be notified
  • If the international search report has not yet been received by the IB, the ISA will be notified
  • If a demand has been filed and the international preliminary examination report has not been received by the IB, the IPEA will be notified
  • The observation (but not the copies of cited documents) will appear on PATENTSCOPE the next day
  • The observation (together with any other observations received and any responses by the applicant) will be notified to designated Offices which have asked to receive such information after 30 months from the priority date or on specific request in relation to a national phase entry

Comparison To U.S. Preissuance Submissions

My initial impression is that it may be easier to use the ePCT Third Party Observations service than to make a Preissuance Submission under 35 USC § 122(e) when that option becomes available for certain pending U.S. patent applications on September 16, 2012. (See this article for a review of the USPTO’s proposed rules for U.S. Preissuance Submissions.) For example, the ePCT system appears to require less information regarding the Third Party and appears to impose fewer formal requirements on the document citations (although some requirements may be imposed by the ePCT on-line interface). Additionally, while the proposed rules for U.S. Preissuance Submissions waive  the fee for the first submission for a given application, the there appears to be no fee for ePCT Third Party Observations. On the other hand, ePCT Third Party Observations are limited to ten citations per observation and ten observations per application, while there are no such absolute limits for U.S. Preissuance Submissions.

Both the ePCT Third Party Observations service and the U.S. Preissuance Submissions have strict time limits on when submissions can be made, so competitors who may be interested in making such submissions should monitor both WIPO and USPTO databases to identify applications of interest as early as possible.

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