21/07/2023
Many jurisdictions provide a mechanism for third parties to submit observations challenging the validity of a pending patent application. This article will focus on the filing of third party observations before the European Patent Office (EPO) and include some insights based on our experience of the use of third party observations.
General background information on third party observations before the EPO:
The filing of third party observations before the EPO is governed by Article 115 of the European Patent Convention (EPC). Third party observations may be filed after the date of publication of a European patent application against a pending application or resulting patent for which proceedings are pending before the EPO (as noted in paragraph 3.1 of the Notice from the EPO of 5 July 2017 concerning the filing and processing of third party observations).
Third party observations can address a broader range of issues than opposition proceedings. In addition to covering novelty, inventive step, added matter and sufficiency of disclosure, third party observations may also address lack of clarity of the claims. Third party observations may also be filed anonymously.
There is no official fee for the filing of third party observations – in contrast to the official fee of €880 payable for filing a notice of opposition against a granted patent.
Although third party observations may be filed with an objective of persuading the EPO to refuse a pending EP application, in practice this can be difficult to achieve. A more realistic goal may be to cause the applicant to narrow the claim scope to something which does not impinge on the activities of the entity filing the observations.
Third party observations have some limitations. A significant limitation is that the entity filing the third party observations does not become a party to the proceedings before the EPO. So, although the EPO are obliged to consider the relevance of objections raised in third party observations to the patentability of the application, there is no two-way correspondence between the EPO and the entity filing the observations. Any dialogue on the merits of matters raised in the third party observations is confined to between the EPO and the applicant. This contrasts with opposition proceedings, where there is two-way dialogue between the EPO and the opponent, in addition to that between the EPO and the proprietor. A further limitation is that the entity filing third party observations has no right of appeal if the EPO are not persuaded by arguments made in the third party observations, although they can file additional third party observations. This contrasts with opposition proceedings, in which the opponent and proprietor each have a right of appeal against a decision made by the Opposition Division which adversely affects them.
How can third party observations be successfully used?
There is a perception that whilst third party observations based on novelty objections can be successful, objections based on inventive step objections are less likely to succeed. However, we have found that third party observations containing arguments directed to inventive step can be persuasive to an examiner.
In one case we presented observations arguing a lack of inventive step of the claims of an application based on a combination of two documents, as indicated below:
- The novel features over the closest prior art document were few in number and were disclosed in combination in a second document.
- The second document provided a clear teaching of using those novel features to solve the objective technical problem as determined in view of the closest prior art, with the novel features also clearly shown in a couple of drawings from the second document.
The EPO examiner agreed with our arguments of lack of inventive step and issued an examination report objecting to the inventive step of the claims following the same reasoning as set out in the third party observations. This ultimately resulted in the applicant narrowing the scope of the claims.
Some additional points worth noting include:
1. Although the EPO will accept the filing of third party observations by mail and do not prescribe a given layout for third party observations, we used the online form that the EPO provide and recommend for the filing of third party observations. However, a significant limitation of the EPO’s online form is that it is solely text-based and does not allow drawings to be inserted to accompany any written arguments. Fortunately, in our specific case the arguments for lack of inventive step were readily understandable with reference to only a couple of drawings from one of the documents cited in the third party observations.
If the inventive step arguments in our third party observations had instead needed to cross-refer to multiple drawings and/or could only have been understood with the addition of annotations to those drawings, a better strategy could have been to either:
- prepare the third party observations in a bespoke format for filing by mail (or delivery by hand, or through use of the EPO’s online filing software); or
- to forgo the filing of third party observations and instead save the arguments for use in post-grant opposition proceedings (should the application ultimately have been granted).
2. If possible, it is worthwhile having some additional prior art documents which you hold back from the third party observations and instead save for later use in post-grant opposition proceedings (in case the third party observations do not provide the desired result). Although there is nothing to prevent a notice of opposition being filed citing only the same documents and arguments used in earlier third party observations, our thinking here is that it can be easier to convince the EPO’s Opposition Division that a patent is invalid when the opposition includes “new” documents and arguments not previously cited during prosecution. Of course, the practicality of this approach will depend on the amount of relevant prior art that you are able to uncover.
3 If an inventive step attack requires complex arguments and/or the combination of more than two documents, it may be better to save such attacks for use in later opposition proceedings rather than including them in third party observations.
When to avoid the use of third party observations:
Under the European Patent Convention, there is greater scope for amending the claims of a pending application than of a granted patent. Amendments made to a granted European patent are subject to the limitation that the scope of protection should not be extended (Article 123(3) EPC). So, there are circumstances where it may be better to avoid filing third party observations and instead only challenge validity in opposition proceedings. This is illustrated in the following hypothetical scenario:
An EP application is filed with independent claim 1 defining a product having features A + B. During prosecution claim 1 is amended to define the product as having features A + B + C + D. The specification of the application as filed states that the product may include feature C alongside features A and B. However, there is no mention of feature D anywhere within the application as filed. So, the amendment of claim 1 contravenes the added matter provisions of Article 123(2) EPC. However, the EPO Examining Division do not raise any added matter objections and instead issue a notice of allowance on the basis of the amended claims. In these circumstances, a competitor concerned at the scope of claim 1 may be better off letting the application proceed to grant and instead highlight the added matter issue in opposition proceedings. The reason for this is that if an added matter objection is raised by the EPO pre-grant, the applicant would be able to address that objection by deleting feature D from claim 1; of course, this may also necessitate additional amendments if feature D contributed towards novelty and inventiveness. However, if the application grants with claim 1 as allowed and an opposition is then filed with arguments explaining how the incorporation of feature D into claim 1 adds matter under Article 123(2) EPC, the proprietor of the patent is placed in a far more difficult position. Specifically, the removal of feature D from claim 1 to address the Article 123(2) EPC objection would broaden the scope of protection of the patent, thereby contravening Article 123(3) EPC.
Ultimately, any decision on whether to use third party observations will be dependent on the specific circumstances of each case. Although achieving refusal of a pending application through the use of third party observations may be a stretch, third party observations can be a useful tool in getting the claims of an application narrowed in scope and therefore may avoid the need to initiate opposition proceedings.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.
