A patent application may reach examination without every potentially relevant public disclosure having been identified. Where a third party is aware of prior art that may have a bearing on the patentability of the pending claims, a third-party observation can provide a mechanism for placing that material before the examiner before the application proceeds to grant.
The procedure can be particularly relevant to businesses monitoring patent applications filed by competitors in areas of technology that overlap with their own products, processes or future development plans.
Assessing prior art against pending claims
The exercise begins with the prior art itself. Public patent publications, technical papers, product literature and other public disclosures may contain information relevant to the novelty or inventive step of a pending claim. Whether a disclosure qualifies as prior art depends, amongst other things, on when and how it was made available to the public, the effective date of the claim, and the law of the relevant jurisdiction. The fact that a document relates to the same general field of technology is, however, insufficient. Its disclosure must be considered against the wording and technical features of the claims under examination.
This analysis can become more complex as prosecution progresses. Claims may be amended in response to examination reports, potentially changing the significance of earlier disclosures and requiring the prior art to be reassessed against the revised claim set.
Where sufficiently relevant material is identified, the next question is whether, and in what form, it can be brought to the attention of the relevant patent office.
Different jurisdictions, different procedures
There is no uniform international procedure for third-party observations.
Under Article 115 of the European Patent Convention, any third party may submit observations concerning the patentability of a published European patent application. The third party does not become a party to the proceedings. Current EPO guidance also provides that observations may address, amongst other matters, novelty, inventive step, sufficiency, clarity and certain other substantive patentability requirements.
The United Kingdom provides a comparable mechanism under section 21 of the Patents Act 1977. Once an application has been published but before the patent is granted, another person may submit written observations on whether the invention is patentable, together with the reasons for those observations. Again, making the observations does not make the third party a party to the proceedings.
The position in the United States illustrates why the procedure must be considered jurisdiction by jurisdiction. Under the USPTO’s third-party preissuance submission procedure, a third party may submit patents, published patent applications and other printed publications of potential relevance to examination, together with a concise description of the relevance of each document. Statutory time limits govern when such a submission may be made.
Third-party observations are also possible during the international phase of a Patent Cooperation Treaty application. The PCT procedure has its own requirements and time limits. An observation in the international phase does not replace any step that may be required in the national or regional phases.
The same disclosure may therefore be relevant to corresponding patent applications in several jurisdictions, but its prior art effect, the manner in which it can be presented, the timing of the submission and the degree of permitted commentary must be assessed separately under each patent system.
The South African position
South Africa does not presently provide an equivalent general procedure for filing third-party observations against a pending patent application. The country currently operates a depository system under which patent applications are not substantively examined for novelty and inventive step. Current reform proposals contemplate the introduction of substantive search and examination together with a mechanism for third-party observations. Until any such reforms take effect, the availability and strategic use of third-party observations is principally relevant to corresponding foreign patent applications in jurisdictions where such procedures already exist.
Intervention while the application is still pending
Third-party observations are distinct from formal opposition, revocation or invalidity proceedings.
Their purpose is to place potentially relevant material before the examiner while examination is still under way. At the EPO, for example, observations that comply with the applicable requirements and are filed sufficiently early may be taken into account while proceedings remain pending, although the person filing them does not acquire party status in the examination proceedings.
For a business concerned about the scope of a competitor’s pending patent claims, this may offer a comparatively focused and cost-effective means of bringing significant prior art to the examiner’s attention before grant.
The approach nevertheless requires careful judgement. The prior art must first be evaluated against the claims, the prosecution history and any amendments made during examination. The applicable procedure must then be considered separately in every jurisdiction in which an observation is contemplated.
Monitoring competitor patent applications, identifying relevant earlier disclosures and acting within the appropriate procedural window can therefore form a useful part of a broader patent risk management strategy.
KISCH IP assists clients with the review of pending third-party patent applications, prior art analysis and the preparation of third-party observations in appropriate jurisdictions.
