Justus Kreuels - 14. June 2022

Third Party Observation

A third-party observation provides an opportunity to challenge patentability before a patent is granted.

Additional prior art must be shown, with sound reasoning, as to why the patent should not be granted and, consequently, why the patent application should be rejected.

After publication of a European patent application

After publication of a European patent application, third-party observations may be filed with the Patent Office. The statement must be filed in writing (online or by mail) in one of the official languages of the EPO (German, English or French) and must be substantiated in detail. The written evidence may be filed in any language; the EPO may request translation into one of the official languages in individual cases.

Third party observations may address lack of novelty and/or lack of inventive step, but may also be directed, for example, against clarity, sufficient disclosure, patentability of the invention or unauthorized amendments.

Examination of the European Patent Office

After formal examination by the Patent Office, objections by third parties are published in a communication and also forwarded to the applicant/patent proprietor who has the opportunity to comment on them.

However, the EPO does not separately inform the third-party of the measures taken. This can be seen in the publication.

If the document questions the patentability of the invention, it must be taken into account in pending proceedings. Third parties are not involved in the proceedings before the EPO, unlike in opposition proceedings.

If the patent has already been granted, third party observations are no longer considered. They are added to the file and only processed if an opposition is filed against the granted patent.

Third party anonymous input possible

In contrast, an opposition requires the use of a straw man if the identity of the attacker on the patent is to be concealed. The effort is therefore reduced.

Third party observation vs. post grant opposition

The third-party observation under Art. 115 occurs in both application and opposition proceedings.

It must be examined on a case-by-case basis whether a third-party observation can be an effective means of preventing the grant of a patent. A carefully drafted observation can be a cost-effective alternative compared to opposition proceedings for a patent that has already been granted.

However, the benefit of third-party observation should also not be overestimated. The patent examiner usually has a strategy for assessing patentability. Third party submissions directed to lack of novelty can be successful. Experience shows that attacks on the inventive step in third party submissions have little chance of success. Such attacks are more likely to succeed in opposition proceedings if queries from the opposition division on the understanding of the features can be responded to.

Another problem with third party submissions is that documents introduced into the patent granting procedure by third party submission can normally no longer be introduced into later opposition proceedings as "new" documents not yet known to the examiner. In later opposition proceedings, such documents are then considered to be already known, and it may be difficult to justify drawing new findings concerning lack of patentability from these documents.

Third party observations in international proceedings

Third party observations can be filed with the GPTO, the EPO and many other patent offices, including the U.S. Patent and Trademark Office.

Since July 2012, international patent applications may also be questioned. Third parties can file observations to a PCT application in the international phase within 28 months of the priority date.

Influence of third-party observations on legal validity

In Germany, the so-called principle of separation applies with regard to the validity of patents. This means that in infringement proceedings the validity of patents per se is presumed and a separate attack on the validity of the patent in nullity proceedings is required in order to be able to use arguments against the validity of the patent as a defense.

As a general rule, arguments against the validity of a patent in infringement proceedings only work if there is a strong (or overwhelming) likelihood that the patent will be revoked in nullity proceedings.

Often, patent judges at patent courts consider auxiliary indicators to assess this. One important auxiliary indicator is whether the patent has already survived a validity proceeding - for example, an opposition or a previous nullity proceeding. In this context, it is often assumed that a patent must have survived so-called two-sided validity proceedings, in which a third party (not the patent office) sought to have the patent cancelled. If this was the case, it is very difficult to convince patent judges to consider arguments against the patentability of a patent in patent infringement proceedings in defense of the alleged patent infringer.

It has been regularly discussed whether third party submissions in patent granting proceedings also strengthen the legal status of a patent in this way. This is partly affirmed and should also be taken into account, if necessary, when deciding whether third party submissions should be made.

Regarding Justus Kreuels:

Justus Kreuels, German and European Patent Attorney since 2011/2012, studied mechanical engineering at the TU Munich and the RWTH Aachen. He is co-founding partner of karo IP. A main focus of his practice is the enforcement of intellectual property rights in the field of mobile communication, Internet of Things (IoT), robotics, etc. in Germany.

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