Observations by Third Parties in EPO Patent Applications

By Dr. Rao Vepachedu, JD, PhD, LLM

(Effective from August 1, 2011)

Within the framework of the “Raising the Bar” project (2nd basket), article 115 EPC enables third parties to present observations concerning the patentability of the invention to which a European patent application or patent relates. Article 115 EPC applies only to published European patent applications and patents, for which proceedings are pending before the EPO. There are no fees for presenting such observations. Online filing is available: http://tpo.epo.org/tpo/app/form/

Any person may present observations concerning the patentability of an invention in a patent application. Third-party observations may be directed to lack of novelty, inventive step, clarity (Art. 84), sufficiency of disclosure (Art. 83), patentability (Art. 52(2) and Art. 52(3), Art. 53 or Art. 57) and unallowable amendments (Art. 76(1), Art. 123(2)), Art. 115 and Rule 114(1)). Observations may not concern formal aspects. They should be restricted to the substantive requirements of the EPC, e.g. Articles 52-57 EPC.

The third party observations must be filed in English, French or German and must include a statement of the grounds on which they are based. The person filing them may not be a party to the proceedings before the EPO. The web interface provided by the EPO is the preferred means of filing such observations (see OJ EPO 2011, 418 and OJ EPO 2011, 420).

Documentary evidence submitted in support of the arguments may be filed in any language. However, if EPO requires, a translation into English, French or German must be filed within the specified period, otherwise the evidence will be disregarded. Rule 3(3).

Although the third party is sent acknowledgment of the receipt of observations, the EPO does not specifically inform of any further action it takes in response. However, the outcome of the evaluation by the competent Division will briefly be indicated in the respective office action from the EPO (e.g. in a communication or in the intention to grant) and will thus be visible to the public.

The observations are communicated to the applicant or proprietor without delay. The applicant may comment on these observations. The third party observations on patentability of the invention in whole or in part must be taken into account in any proceedings pending before a department of the EPO until such proceedings have been terminated, i.e. they must be admitted to the proceedings. If the observations relate to alleged prior art available other than from a document, e.g. from use, this should be taken into account only if the alleged facts either are not disputed by the applicant/proprietor, or are established beyond a reasonable doubt.

Submission of observations filed as third party observations will be placed in the public part of the file of the patent application or patent, i.e., they will be accessible to the public. Observations by third parties received after the conclusion of proceedings will not be taken into account and will simply be added to the non-public part of the file. Rule 114(2).

The third party is not a party to the proceedings before the EPO and so will not be informed directly or be further involved in proceedings. However, the progress of proceedings before the EPO can be followed online using the European Patent Register which includes an email alert service.

Although the EPO web site refers to a phantom pdf form to mail the observations, there is no such form that can be located. Perhaps, the EPO prefers electronic filing online, by making the mailable form unavailable. (Third-party observations form -> access online; see http://www.epo.org/service-support/forms.html)

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