Third-party observations during prosecution before the EPO (1)
Challenging a competitor’s European patent application during prosecution can provide a strategic advantage, particularly in fiercely competitive fields like FMCG chemicals and pharmaceuticals, where early intervention may be desirable. At the European Patent Office, this can be done by submitting third-party observations (TPOs).
This article is split into two parts. The first part covers formal and procedural aspects of filing TPOs during prosecution before the EPO. The second part addresses practical and strategic considerations.
If you are considering submitting third-party observations or would like to discuss strategies for influencing a competitor’s prosecution in Europe, feel free to get in touch.
TPOs - the basics
Any third party can file observations against a European patent application. There is no official fee for submitting TPOs.
The observations can be filed anonymously (this has some consequences, as explained in more detail below) or using a strawman (such as a solo patent attorney). Maintaining anonymity may be relevant if commercial relationships are at stake.
TPOs must be filed in writing, in English, French or German. Cited documents (e.g. patent publications) and supporting evidence (e.g. experimental reports) can be filed in any language, but the EPO may request that a translation into English, French or German be filed within a specified period. If translated evidence is not timely filed, the EPO will disregard the evidence.
The EPO provides a dedicated online form for filing TPOs.
The observations can raise objections relating to:
lack of novelty or inventive step
lack of clarity
lack of sufficiency of disclosure
subject matter excluded from patentability; and/or
unallowable amendments.
A person filing TPOs does not become a party to the proceedings - they will not be informed about the progress of an application, nor will they be invited by the EPO to file further comments. It may thus be useful, after filing TPOs against an application, to monitor further developments by signing up for the EPO’s email alert service and/or regularly checking the public file wrapper of the application.
Once TPOs have been filed, they are communicated to the applicant, who may comment on them - there is no (initial, at least) obligation for the applicant to respond to the observations. TPOs are also placed on the public file wrapper, along with the cited documents. The EPO will consider the observations in the meantime.
For instance, let’s say TPOs are filed before the issue of an examination report (e.g. following the applicant’s reply to a search opinion); the examiner then considers the arguments submitted in the TPOs along with any accompanying evidence. If the examiner deems a part or the entirety of TPOs to be pertinent, the examiner raises objections based on some or all of arguments/evidence included in the TPOs. If not, the TPOs are disregarded, and the examination report focuses on matters discussed to date by the EPO and the applicant. Sometimes, examiners kindly include in an examination report a brief explanation as to why the TPOs have been disregarded.
TPOs – timing/timelines
It is possible to file TPOs once a patent application has published, up to the date on which the decision to grant the patent has been handed to the EPO’s internal postal service. While this timeframe may seem to be generous, it is generally good practice to file TPOs sooner (e.g. before the start of examination or shortly after the applicant’s reply to the first examination report) rather than later, if possible.
In the context of international (PCT) applications entering the EPO regional phase, the EPO will consider the content of any TPOs filed during the international phase upon entry to the EPO regional phase. Thus, any objections raised in the TPOs filed during the international phase might be included in the first substantive communication issued during the EPO regional phase.
Filing substantiated, non-anonymous TPOs has, at least in principle, the effect of accelerating prosecution. If such TPOs are filed before the issue of an examination report, the EPO will make every effort to issue a subsequent examination report within three months of receipt of the TPOs. If such TPOs are filed while the EPO is awaiting the applicant’s reply to an examination report, a subsequent examination report should be issued within three months of receipt by the EPO of the applicant’s reply.
Similarly, if substantiated, non-anonymous TPOs have been filed during the international phase, the examining division will try to issue an office action within three months after expiry of the period set under Rule 161 EPC. However, the observations must include a request that the EPO apply such expedited treatment once the application has entered the EPO regional phase. Alternatively, the observations can be refiled after the regional phase entry.
Thus, filing TPOs non-anonymously might sometimes be preferable, particularly if early certainty is of importance.
Conclusion
In summary, while the process of filing TPOs during EPO prosecution is relatively straightforward, certain procedural nuances should be kept in mind to ensure compliance with EPO practice.
The second part of this article will look into how TPOs can be used (or handled) strategically.
If you are exploring how best to approach third-party observations or would like to discuss European prosecution strategy more generally, feel free to get in touch.
This article is for general information only and is not intended to constitute legal advice. If you would like tailored advice on a specific matter, please do not hesitate to contact me.
