If another company's patent application threatens our products, one way to challenge its grant is to submit third-party observations (TPO). This procedure supports patent examination by allowing a third party to explain why an application's claims do not meet the requirements for a patent.
In China, third-party observations are known as public observations.
1. Relevant provisions
Rule 48 of the Implementing Regulations of China's Patent Law allows any person, from publication of an invention patent application until the announcement of grant, to submit observations to the State Intellectual Property Office (SIPO) explaining why the application does not comply with the Patent Law.
Section 4.9 of Chapter VIII, Part II of the Guidelines for Patent Examination provides that observations concerning an invention patent application's non-compliance with the Patent Law must be included in the application file and considered during substantive examination. Examiners need not consider observations submitted after the notification of grant has been issued.
The person submitting observations will not be notified of how they are handled.
Anyone may therefore submit TPO in China, either anonymously or under their real name. The procedure applies only to invention patent applications, making its scope narrower than in the United States and Japan. US preissuance submissions may concern non-provisional utility, design or plant patent applications, including continuing applications. In Japan, information may be submitted concerning pending patent and utility-model applications as well as granted rights.
In China, the submitter is not notified of how the observations are handled. In Japan, a person who submits information and requests feedback may be informed of how it was used. In the United States, USPTO will send a notice of non-compliance, with reasons, to the submitter's email address if one has been provided. This is different from feedback on whether the examiner accepted the arguments.
2. How to submit TPO
1) Submission time:
TPO may be submitted from publication of an invention patent application until the announcement of grant.
2) Format and method of submission:
In practice, SIPO's official Statement of Observations form may be used (see Note 1). Electronic filing is available when that form is used alone. Under the procedure described here, however, observations accompanied by other documentary evidence must be submitted on paper.
3) Grounds for submitting TPO:
There is no specific list of grounds for observations. In practice, submissions commonly rely on Rule 53 of the Implementing Regulations. Examples include lack of novelty, inventive step, unity or clarity; insufficient disclosure; ineligible subject matter; and double patenting (see Note 2 on unity in Japan and at the EPO).
4) Fees: No official fee is charged.
5) Receiving authority: SIPO.
3. How to make TPO useful to examiners
1) Submit observations as early as possible, ideally before the examiner begins searching, rather than waiting until office actions have been issued and the application is close to grant.
2) Where possible, include non-patent literature or patent literature in languages other than Chinese or English, as examiners may find this material harder to locate. A Chinese translation of foreign-language material will help the examiner review it.
3) Present reasons as persuasively as an examiner's office action. Where useful, include a claim chart comparing the claimed technical features with the evidence, to make the issues easier to assess.
4) When challenging novelty or inventive step, published documents are generally preferable to evidence of the submitter's own prior use. The submitter does not become a party to examination and will not be invited to supply missing evidence or explain and develop a prior-use case.
SIPO had not published specific figures on examiners' use of TPO. A JPO survey of applications examined in December 2011 found that, among the applications that had received information submissions, the submitted documents were cited in notices of reasons for refusal in 72% of cases.
SIPO's Guidelines provide that submitters are not notified of how their observations are handled. How, then, can they find out whether the examiner used them?
Although no direct feedback is given, SIPO's office actions may reveal whether observations were used. For applications filed after February 10, 2010, office actions can be accessed through the Chinese Patent Inquiry System at http://cpquery.sipo.gov.cn/. The system described here has interfaces in Chinese, English, German, French, Japanese, Spanish, Korean and Russian, with data updated weekly.
4. Advantages and disadvantages of TPO
1) Advantages
A. Observations allow action at an early stage to prevent claims from being granted as originally requested, or to delay grant.
B. The cost is lower than that of invalidation proceedings. The procedure is straightforward, and observations may be submitted anonymously.
2) Disadvantages
A. No direct participation in examination:
Under the Guidelines for Patent Examination, TPO serve as a reference and do not require a reply. The submitter therefore cannot participate directly in substantive examination.
Where important issues require explanation or remain unclear, this limitation can affect the outcome. The applicant can discuss the examiner's use of the observations through interviews or respond by amending the application, whereas the submitter cannot engage with the examiner in the same way. The resulting decision may therefore fall short of the submitter's expectations.
B. Alerting the applicant:
Observations may prompt the applicant to handle the application more carefully to secure grant. Even if the applicant had not previously intended to do so, learning of the observations may lead it to file divisional applications and obtain additional patent rights. This could place the submitter in a less favourable position.
Amendment restrictions during substantive examination are less stringent than in invalidation proceedings. The applicant may therefore use the issues identified in the observations to improve the claims and obtain stronger protection.
5. Comparison of the four systems
China — SIPO
Legal basis: Rule 48 of the Implementing Regulations of the Patent Law. The procedure covers pending invention patent applications, from publication until announcement of grant. Anonymous and electronic submissions are possible, subject to the documentary-evidence restriction described above. In practice, the Statement of Observations form is used; relevant Chinese or English translations are recommended. No official fee is charged. The original comparison describes access by unrelated members of the public as unavailable, with no direct feedback to the submitter on use of the observations. The number of submissions was not published. China abolished its patent opposition system in 1992.
United States — USPTO
Legal basis: 35 U.S.C. 122(e) and 37 CFR 1.290. Preissuance submissions may concern non-provisional utility, design or plant applications, including continuing applications, even if unpublished or abandoned. They must be filed before the earlier of (a) the mailing of a notice of allowance or (b) the later of six months after publication and the first rejection of any claim. Anonymous and electronic submissions are available. Form PTO/SB/429 or an equivalent document list is used. An English translation of the relevant foreign-language material is required; a reliable machine translation may be used.
The original issue records a fee of USD 180 per ten documents, with an exemption for a qualifying first submission of three or fewer documents. Submissions in an accessible application file can be inspected. Where an email address is provided, USPTO may notify the submitter that a submission is non-compliant and give reasons; this is not feedback on whether the examiner adopted the arguments. The issue reports approximately 1,000 submissions and notes that the availability of post-grant challenge procedures may help explain the comparatively low number.
Europe — EPO
Legal basis: Article 115 and Rule 114 EPC. Following publication, third parties may comment on the patentability of a European patent application or patent during pending proceedings. This is not a utility-model procedure. Anonymous and electronic submissions are possible. Observations may be filed by letter or through the online form. The submission is in English, German or French; relevant translations may be required. No official fee is charged. The observations are publicly accessible. EPO acknowledges receipt but does not specifically notify the third party of subsequent action, and the third party does not become a party to proceedings. The issue reports approximately 1,000 observations and notes the availability of opposition proceedings.
Japan — JPO
Legal basis: Rules 13-2 and 13-3 of the Implementing Regulations of the Patent Act and Rules 22 and 22-2 of the Implementing Regulations of the Utility Model Act. Information may concern patent or utility-model applications and granted rights. Anonymous and electronic submissions are possible, using Form 20. Relevant Japanese translations are recommended. No official fee is charged. The information can be inspected, and the provider may request feedback on its use. The issue reports approximately 7,000 submissions. Japan abolished its then patent opposition system in 2004, which the original article identifies as one reason for increased use of information submissions.
6. Conclusion
SIPO had not published comprehensive submission statistics. A 2012 survey of more than 200 patent examiners found that over 80% had received fewer than five third-party observations in their work. Many considered the observations helpful in improving examination quality and shortening examination time, indicating that examiners generally welcomed useful submissions.
Information submissions are receiving attention in more countries and regions. WIPO introduced third-party observations for PCT applications in July 2012, and Taiwan introduced a corresponding system under its Patent Act effective in January 2013. As public attention to intellectual property, enterprises' use of IP and patent filing volumes increase in China, calls to improve the public-observation system are growing. The author hopes its gaps will be addressed so that the system becomes more open and easier to use.
Notes
1. The Statement of Observations Form can be downloaded from http://www.sipo.gov.cn/bgxz/ 2. In Japan and at the EPO, the third-party observations based on lack of unity are not allowed to be submitted.
3. From: https://www.jpo.go.jp/seido/s_tokkyo/tt1210037_sanko2.htm 4. From:http://www.uspto.gov/aia_implementation/statistics.jsp 5. Tomoko Nakatani, Hiroshi Hasegawa, Geoff Woods, Joseph P. Farrar, 日本、欧州、米国における権利化阻止手段と特許無効化手段、Page 47 of Issue 1, 2013, Invention, Patent Promotion Association 6. From: http://www.jpo.go.jp/seido/s_tokkyo/tt1210037_sanko2.htm 7. "A Discussion on the Introduction of Moderate Feedback in the Public Observations Submission Scheme for Patent Examination" by Li Fuchang, Page 77 Issue 10, 2012 China Invention & Patent
