Third-Party Observation: The New Tool To Challenge The Legal Validity Of PCT Applications

Author:Mr Andreas Holzwarth-Rochford
Profession:Jones Day

In many national and regional jurisdictions, any third party, by so-called third-party observations, may aid its patent office in identifying prior art that might question the patentability of a patent application due to a lack of novelty and/or inventiveness. Recently, the America Invents Act ("AIA") introduced provisions for third-party submissions, effective as of September 16, 2012. Effective July 1, 2012, third-party submissions will now also be codified in the Patent Cooperation Treaty ("PCT") Regulations. The first third-party observations might thus be filed from July 2, 2012 for International Patent Applications during the preliminary international phase.

Existing National/Regional Regulations on Third-Party Observations

The purpose of third-party observations is to give members of the general public the opportunity to notify the Patent Office of written state of the art information that might be of relevance for assessing novelty and/or inventiveness. Most patent offices endeavor to search not only written state of the art in the form of patent documents, but also general written documents such as journal articles, web publications, etc. For example, the European Patent Office ("EPO") entered into contracts with a large number of publishers and database providers for non-patent literature ("NPL") to gain access to such documents. The EPO today has access to more than 400 million NPL-documents. However, the search possibilities are still restricted and cannot cover the entire written state of the art. To avoid the situation where an interested third party has to await a grant of a patent to challenge the legal validity of a claimed subject matter via an opposition or a national nullification procedure, third parties now will have the ability to provide information on written state of the art to the patent office during the examination procedure.

The right of the general public to provide such third-party observations is implemented in such national/regional patent law regulations as the European Patent Convention (Art. 115 EPC) or the German Patent Act (§43 (3) (3) PatG). Beginning on September 16, 2012, the AIA will provide for third-party observations with the U.S. Patent and Trademark Office ("USPTO"). In comparison with the European regulations that give a third party the ability to file third-party submissions during opposition procedures—and thus after the grant of a patent—the AIA prior art submission can be filed only before the earlier of (i) notice of allowance or (ii) the later of six months after...

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