The European Patent Office has recently released a notice concerning the filing of third party observations.
Third party observations enable an external party with an interest in a patent or patent application to file comments on that patent or patent application, which are then taken into account by the EPO.
The legal basis for such observations is found in Article 115 of the European Patent Convention:
In proceedings before the European Patent Office, following the publication of the European patent application, any third party may, in accordance with the Implementing Regulations, present observations concerning the patentability of the invention to which the application or patent relates. That person shall not be a party to the proceedings.
This provides that third party observations can be filed on any published patent or patent application provided that proceedings are pending before the EPO. Proceedings may be, for example, examination (for a pending application) or opposition proceedings (for a granted patent).
Third party observations can be filed anonymously, and may be accompanied by supporting documents such as prior art citations. The observations must relate to substantive issues, for example to novelty or inventive step, and cannot relate merely to formal requirements.
Once a third party has submitted observations their part in the proceedings is over; they are not made a party to the proceedings. However, it is possible to view the observations and follow any subsequent action through the online European Patent Register.
After submission, copies of the observations are sent to the applicant or patent proprietor, and to the relevant examining or opposition division.
A pilot scheme, which started on 1 August 2011, allows for third party observations to be filed using an online form. The form can be accessed from the EPO website, and has been designed to encourage concise and well‑reasoned observations which can be quickly understood and evaluated by examiners. Use of the online form is not compulsory, and existing mechanisms for filing observations may still be used.
The EPO has also changed its practice to ensure that examining and opposition divisions comment explicitly on the relevance of third party observations in the next substantive communication made in relation to the proceedings.
Whilst not always advisable, third party observations are often a powerful and cost-effective tool for bringing relevant information to the attention of the EPO, anonymously if desired. The possibility of filing observations online will facilitate the process, and hopefully encourage more people to take advantage of this tool, which in turn will improve the quality of the patents granted by the EPO.
23 August 2011