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IP Cases & Commentary – Details

1 October 2012

PCT Applications - Filing Third Party Observations

David Horner

PCT Applications - Filing Third Party Observations

The international patent application system administered by the World Intellectual Property Organization (WIPO) allows an applicant to file an international application (also referred to as a PCT application) which is maintained as a single application during the so-called ‘international phase’. At the end of the international phase, the applicant can then turn the PCT application into multiple separate applications in countries of interest. During the international phase, a search for relevant prior art in relation to the PCT application is performed by an international searching authority (ISA), and optionally the applicant may request that a preliminary examination be performed by an international preliminary examining authority (IPEA) on the basis of the prior art identified by the ISA.

Traditionally, third parties have had no mechanism for commenting on a PCT application whilst it is in the international phase. However, via a form on WIPO’s electronic interface ‘ePCT’, it is now possible for third parties to submit an observation on a PCT application during the international phase if they believe that the claimed invention either lacks novelty or inventive step. Some key points of the third party observation mechanism are:

  • Observations on a PCT application can be submitted from the PCT publication date until 28 months from the priority date of the PCT application;
  • a party may only make a single observation on any particular PCT application;
  • a maximum of 10 observations may be submitted on any particular PCT application;
  • an observation consists of a list of at least one, and up to a maximum of ten, documents published prior to the international filing date (or patent documents having a priority date before the international filing date), together with a brief indication of how each one is considered to be relevant to the novelty or inventive step of the claimed invention;
  • although a user account with WIPO is required in order to file an observation, it is possible to select an option on the form that causes your identity to be kept confidential.

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 (excluding copies of the cited documents) and any responses by the applicant will be made publicly available on WIPO’s PATENTSCOPE website. They will also be made available to the ISA if the international search report has not yet been produced, and to the IPEA if the international preliminary report on patentability has not yet been prepared. Furthermore, they will be notified to any patent offices in which applications are derived from the PCT application at the end of the international phase.

It is however up to the individual offices to decide what use to make of an observation filed by a third party. This is a potential disadvantage common to third party observation schemes run by other patent offices, since the third party cannot influence the subsequent discussions that take place between the applicant and the relevant patent office/international authority, and hence will be reliant on the patent office/international authority making effective use of the material provided in the observation.

However, on a positive note, the above PCT third party observation mechanism provides a simple, centralised mechanism for bringing relevant prior art to the attention of the applicant, the international authorities involved in the handling of the PCT application during the international phase, and the patent offices that subsequently handle applications derived from the PCT application. Further, due to the early stage in prosecution that such prior art can be made available via this mechanism, it will be available for consideration by patent offices during examination of the various applications derived from the PCT application, and potentially in time for it to be considered during any international preliminary examination performed by the IPEA.

Further, even if the applicant has filed other applications for the invention that are not derived from the PCT application, that applicant may be obliged to bring the cited prior art to the attention of the relevant patent office. Purely by way of example, it is possible that the applicant may pursue a separate US patent application not derived from the PCT application. Prior to grant of the US application, the applicant will have an obligation to disclose to the US PTO any relevant prior art that the applicant is aware of, and hence is likely to be obliged to forward to the US PTO any prior art identified in such an observation filed on the PCT application.

In summary, this third party observation route may be worthy of consideration in some cases, due to the wide dissemination of the observation, and the relatively early stage that the observation is made. For further information, please contact your D Young & Co attorney.

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