News and developments
PCT Third Party Observations
Before the TPOS, the only people involved in the international phase of a PCT application were the applicant and the Offices (i.e., receiving office, International Bureau and International Searching and Preliminary Examining Authorities) for conducting various aspects of processing the application before entering the national phase. Third parties were getting some information during the processing of the application in the International Phase, but these parties had no opportunity to question the novelty and the inventive step of the PCT applications in the International Phase. The role of Third parties came into picture only after the application entered the National Phase in the respective countries. This changed on April 13, 2017 when the TPOS was introduced.
As per sections 801(b) (iii) and 801(b) (iv), a third party can only submit a single observation for an international application, and once submitted, it cannot be retracted or modified. There is also an upper limit of ten third party observations that can be filed to an international application, at the international phase.
It should be noted that only the observations and not the uploaded documents are made publicly available. Uploaded documents are only made available to the applicant, the competent International Authorities and designated Offices. If the observation is rejected by the International Bureau, the third party will be notified and provided with a reason. An Observation made by a third party shall:
- be submitted to the International Bureau through the third party observation system as provided in Section 801;
- be submitted between the date of international publication and 28 months from the priority date of the international application indicated;
- be in the language of publication, with the exception that copies of submitted prior art documents may be in any language;
- relate to the international application indicated;
- refer to prior art;
- be free of viruses or other forms of malicious logic;
- be free of comments or other matter not relevant to the question of novelty or inventive step of the invention claimed in the international application; and
- be free of comments or other matter which are an abuse of the third party observation system.
- the international application has not yet been published;
- the time limit has expired (28 months from the priority date) – it is advisable to make any observations before the last day of the period so that there is the possibility of making corrections if your observation is initially found unacceptable for any reason;
- the international application has been withdrawn or is no longer being treated as an international application;
- you have already submitted an observation on this international application;
- a total of 10 observations have already been submitted for this international application;
- you are the applicant or if you represent the applicant. However, an equivalent function is provided as an “action” in ePCT called “observations on close prior art” where you must first sign in to the ePCT system. This function is available at any time up to 30 months from the date of priority, including before international publication; and
- if your account has “eOwner”, “eEditor” or “eViewer” rights for the international application, you will receive an error message warning you to use the above-mentioned “action” instead.