Third Party Observations Allowed In PCT Applications
As of 2 July 2012, WIPO is allowing third party observations to be filed in respect of PCT applications.
Third parties are now able to submit information that they believe shows that an invention claimed in a PCT application is not new or not inventive.
Some key points of the system are:
- observations can only be lodged via the ePCT public services system on the WIPO website;
- there is no fee for using the service;
- the window for submitting observations is from the international publication date to 28 months from the priority date;
- a person can only make one observation on a given PCT application and a maximum of ten observations by different persons may be made on a given PCT application;
- an observation can contain between 1 and 10 prior art citations with a brief (500 characters) indication of the relevance of each citation;
- the observations will be reported to the applicant as well as (i) the ISA if the ISR is yet to be received by the International Bureau, (ii) the IPEA if the IPRP II is yet to be received by the International Bureau, (iii) any Designated Office that has asked to receive such information;
- the applicant may respond to observations until 30 months from the priority date;
- the observations and any response by the applicant will be available on the WIPO Patentscope online database;
- the person submitting the observation is not able to make any further submissions during the processing of the PCT application.
This new offering from WIPO is a welcome addition to the PCT system and can only serve to improve the level of searching and examination in respect of PCT applications, where observations are lodged. The efficacy of this system will depend on the level of uptake by third parties in lodging observations and it will be interesting to see how widely it is used over time.
Please contact Cotters if you would like any further information about the changes or if you wish to request examination on any pending patent applications.
By Paul Mahony and Marcus Dalton
Cotters Patent & Trade Mark Attorneys
19 July 2012
