IP Insights: Third-party observations

Show notes

Connect with Dr. Christof Karl: https://www.bardehle.com/en/team/karl-christof Connect with Preston Richard: https://www.bardehle.com/en/team/richard-preston

Hello, everyone. Many of you know that you can attack a patent by opposition proceedings or national revocation proceedings. But did you know that you can act even before a patent is granted? One such tool is called “third-party observation”, and we’re going to talk about it today. My name is Christof Karl and I’m here with my colleague Preston Richard. So, Preston, what is a third-party observation?

Many IP offices, including the European patent office, allow third parties to file observation against the patentability of an invention. This is to assist the patent examiner, but can also be used by the competitor to prevent the grant of a patent, or at least limit the scope of the invention.

And, in fact, such a third-party observation can be filed by anyone, even anonymously. The advantage of doing so anonymously is that you don’t necessarily get on the radar of the applicant as a potential infringer, or you might have a good relationship with the applicant which you don’t want to jeopardize.

But non-anonymous filing can also have its advantages. For example, a non-anonymous filing at the European Patent Office will result in expedited proceedings, therefore providing an early certainty for the client. In both cases, the party which files the observation is not informed of the outcome. Therefore, you have to monitor the progress of the application and, if necessary, file further submissions. This takes us to an important question: When to file a third-party observation, or wait for the grant of the patent and then file an opposition instead?

Well, the advantage of a third-party observation is that you can prevent that the patent issues in the first place. So, for example, if you are ready to launch a product and you identify a patent application the claims of which would cover that product, you can file such an observation, in the hope that you can, at least, reduce the scope of the claim, or even prevent that the patent is granted at all. On the other hand, if you have the luxury of time, you could lean back, observe how the prosecution of that patent continues, and then file an opposition after grant, if necessary.

Another scenario where a third-party observation is advantageous or recommended is when you want to oppose based on the grounds of lack of clarity, conciseness, or lack of unity of claims. Since these objections cannot be raised in an opposition, it becomes crucial to file them in an observation before the patent is granted.

The main disadvantage of third-party proceedings is that you are not actually a party to the proceedings. That means, in a case where you need to be able to always counter any arguments made by the applicant, for example in oral proceedings, in this case, it might be advisable to hold back the additional prior art that you may have identified and not burn it in the third-party-observation. On the other hand, if you have, for example, a clearly anticipating prior-art document, putting it on file in a third-party observation may be very effective.

But it’s important to understand that both these routes can be taken. And since no official fee is involved in third party observations, it can be a low-cost option to attack an invention.

It should, nevertheless, be well-prepared, though, taking into account timing and strategy.

If you would like to know more about third-party observations, please free to contact us. Thank you.