6.3.5.3 PCT Third Party Observations

• 6.3.5.1 First IPE Action

• 6.3.5.2 Supplementary International Search Report

• Annex K

• RIO and Intelledox - Processing PCT Tasks

• General

• Dealing with PCT Third Party Observations

  • During the international search stage

  • During the International Preliminary Examination (IPE) stage

A system implemented under the PCT from 2 July 2012 allows third parties to make observations on an international application. These observations can be submitted if the third party believes that the claimed invention is either not new (lacks novelty) or is obvious (lacks an inventive step).

The key points of this PCT Third Party Observation system are as follows:

• An observation on an international application can be submitted by a third party from the international publication date until 28 months from the priority date.

• Once the observation has been accepted by the International Bureau (IB):

  • the applicant will be notified

  • if the International Search Report (ISR) has not yet been received by the IB, the International Search Authority (ISA) will be notified

  • if a demand has been filed and the International Preliminary Report on Patentability Chapter 2 (IPRPII) has not yet been received by the IB, the International Preliminary Examining Authority (IPEA) will be notified

  • the observation (but not copies of the cited documents) will be available on Patentscope the next day.

• The applicant is permitted to respond to the observation until 30 months from the priority date, but is not required to do so.

• The observation – together with any other observations received and any responses from the applicant – will be notified to designated Offices which have asked to receive this information. This will occur either after 30 months from the priority date or upon specific request in relation to a national phase entry.

An example of a PCT third party observation is shown in Annex K.

Examiners must take any third party observations into consideration when preparing an ISR and International Preliminary Examination Opinion (IPEO)/IPRPII. These will be listed amongst the documents on file as ‘Third Party Observation’ or ‘Third Party Obs’. However, it is unlikely that a third party observation will be available during the international search stage under normal circumstances.

If a document referred to in a third party observation was not found during the international search but is cited in the ISR, the examiner may indicate this under the ‘FIELDS SEARCHED’ section of the ISR. The examiner should populate the ‘Documentation searched other than minimum documentation’ box under this section with ‘PCT third party observation submitted [Date]’. See RIO and Intelledox - Processing PCT Tasks.

Additionally, where a document referred to in a third party observation is cited in the ISR, the examiner is to enter ‘PCT third party observation submitted [Date]’ in the ‘Earlier Search Results (if available)’ field of the international Search Information Statement (SIS).

If the IB transmits a third party observation to the IPEA in sufficient time for it to be taken into account before establishing the IPRPII, any document referred to in the observation should be considered in the same way as if it had been cited in the ISR, provided that either:

• a copy of the document is included with the observation

• is otherwise immediately available to the examiner.

The examiner is not required to comment on a document referred to in a third party observation unless the examiner considers it appropriate to cite the document. The examiner may, if considered useful, state in Box V of the IPEO/IPRPII that third party observations submitted on specified dates have been taken into account in preparing the opinion on novelty and inventive step.

A new international SIS need not be created even if a document referred to in a third party observation is cited for the first time in the IPEO or IPRPII.