In what would probably be music to the ears of the Indian generic industry, WIPO under the PCT system now allows for third party submissions to be made for a published PCT application, similar to our pre-grant opposition system.
Because the PCT system follows strict time schedules for sending in submissions, it is suggested that those who may be interested in making such submissions should monitor the WIPO database regularly to identify applications of interest as early as possible. As with the case with such programs, only time will tell how many third parties will make the effort to bring potentially relevant prior art to the attention of examining body. And I suspect that generics would be among the first to make use of this system.
From June 29, third parties may submit their submissions or ‘observations’ in published PCT applications via the PCT Public Service system. Complete text of the program may be seen here.
A few highlights from the document are reproduced below.
“The third party observation service now permits third parties to make certain observations on an international application during the international phase if they believe that the claimed invention is either not new (lacks novelty) or is obvious (lacks inventive step). The key points of the service are as follows:
- Observations on an IA can be submitted from the international publication date until 28 months from the priority date using the service described in this guide.
- A person may only make a single observation on any particular IA.
- A maximum of ten observations may be submitted on any particular IA.
- An observation consists of a list of at least one and up to a maximum of ten citations that refer to documents published prior to the international filing date (or patent documents having a priority date before the international filing date), together with a brief indication of how each one is considered to be relevant to the novelty or inventive step of the claimed invention.
- Preferably, the observation should be accompanied by a copy of each relevant cited document, which will be made available to the applicant and Offices, but will not be made publicly available on PATENTSCOPE.
- The applicant is permitted to respond to observations by third parties until 30 months from the priority date, but is not required to do so. This can be done either through ePCT private services or by sending a letter to the International Bureau.
- The observations and any responses by the applicant will be notified to the applicant, ISA (if the international search report has not yet been received by the IB), IPEA (if applicable and the international preliminary report on patentability has not been received by the IB) and DOs.
- It is up to the individual Offices to decide what use to make of an observation. The person who submitted the observation does not have any additional right to intervene in the processing of the international application, save what may be possible in the national phase through opposition and similar procedures.
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2 comments.
While the idea of 3rd party submissions seems like a good idea I really wonder how many sophisticated players will use such a system. Suppose that there is a competitor’s patent which concerns me because it may cover my current or future product. Also assume that I have good (either novelty or inventive-step destroying) prior art against it. In such a case, why would I want to: 1) spend money to 2) give the applicant a chance to put their own spin on it, 3) without my own full ineter-partes involvement? That’s just giving you best weapon to your opponent.
It is a far better strategy to keep this prior art in your pocket for when the competitor tries to enforce the patent against you. Then you can bring it out and either show them or attack the patent in an invalidation proceeding where you have full participation and more control.
Thank you for pointing out. This would normally not have come to the knowledge of the interested persons/stake holders. It is good on the part of WIPO for allowing the third party submissions. These are merely submissions and not objections, hence the third party has not been given any right to be heard. Third party is merely an informer.