Third Party Observations under the PCT

Traditionally, the only people involved in the international phase of the PCT have been the applicant and the Offices conducting the various aspects of processing (receiving Office, International Bureau and International Searching and Preliminary Examining Authorities). During the February 2012 Meeting of International Authorities under the PCT, it was announced that as of July 1, 2012, third-party observations may be filed for PCT applications.

With the third-party observation system under the PCT, it will be possible for members of the general public to notify the Patent Office with written state of the art information that might be of relevance for assessing novelty and/or inventiveness and thereby to influence the search and/or the preliminary examination procedure of an International Patent Application during the international phase.

Third-party observations can be filed at any time between the publication date of the International Application and 28 months from the priority date of the application.

A person may only make a single observation and a maximum of ten observations may be submitted on any particular international application. The observation consists of a list of at least one and up to a maximum of ten citations that refer to 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. Thus, third-party observations are restricted to written state of the art information, thereby limiting misuse of the procedure by a third party to slow down the examination. Moreover, the third party observation service is not for use by the applicant or his representatives.

The party filing the observation can choose to remain anonymous, meaning that the International Bureau will not reveal any details of the third party’s identity to the public, the applicant, or any International Authority or designated Office. However the observations are open for public inspection.

After a first third-party observation for an application is received, the International Bureau notifies the applicant immediately, and the applicant has the opportunity to file comments on the observations until 30 months after the priority date. These comments will likewise be made available for public inspection.

Moreover, the International Bureau will communicate any third-party observation and the applicant’s comments to the appropriate International Authorities, especially the International Search Authority and/or International Preliminary Examination Authority. The examiner will have to refer to the filed state of the art documents only if he considers them relevant for inclusion in the search report. Similarly, the Preliminary Examination Authority has to consider the state of the art filed with the observation as if it were part of the field of search. However, the examiner will only have to comment on the state of the art if he considers worthy of citing. Finally, the observations and comments will be made available to the designated offices. However, the designated offices are not obliged to take into consideration the observation or the comments,    and it is up to the individual Offices to decide what use to make of an observation.

Although the national offices are not required to take the submission into consideration during their examination procedure, the state of the art documents will become part of the national official file and accessible for others to challenge the legal validity of the application as granted patent.

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