Sunday 13 August 2023

Third Party Observations

Third party observations can sometimes be a useful tool when keeping an eye on other people's pending European patent applications. While EPO examiners typically do a decent job of search and examination, there are exceptions and even the best examiners only have a limited amount of time to deal with applications so cannot always cover all possibilities. Sometimes a little prod from a third party can make the difference, for example the difference between a third party having to file an opposition to get rid of a troublesome patent and preventing the patent from being granted in the first place (or at least being granted with a limited and non-threatening scope). 

Knowing that examiners typically do their job well, when is the best time to consider whether third party observations should be filed? If you have knowledge of highly relevant prior art, the best time is probably while examination is underway, preferably after the search report issues and before substantive examination begins. Observations are then more likely to be taken into account and the applicant can be forced to narrow the claims to work around the prior art. This is also relevant for other issues such as added matter and clarity, although the examiner should really be on top of these so should ideally be left to do their job. What, however, if there are issues that don't become relevant until later on? Things can be a bit more difficult, which I will show using a couple of recent examples. 

The relevant section of the Guidelines is E-IV, section 3, which states:

Following publication of the European patent application under Art. 93, any person may present observations concerning the patentability of the invention. Although lack of novelty and/or inventive step are the most common observations, third-party observations may also be directed to clarity (Art. 84), sufficiency of disclosure (Art. 83), patentability (Art. 52(2) and (3) or ) and unallowable amendments (Art. 76(1)123(2) and 123(3)).

So there is no restriction on who can file observations as well as no restrictions, unlike in opposition proceedings, on filing observations regarding clarity. Another issue that is not specifically mentioned is that there is no restriction on observations regarding double patenting (G-IV, 5.4), which is also not a ground of opposition. 

In theory, observations should be taken into account at any stage while an application is still pending, i.e. before a decision has been made to refuse or grant the application. In practice, however, there is an issue with observations that are filed after a communication of intention to grant under Rule 71(3) EPC has issued. According to the Guidelines:

Observations by third parties received in examination after dispatch of a Rule 71(3) communication but before the decision to grant (EPO Form 2006A) has been handed over to the EPO postal service will be considered by the examining division. If they are relevant, the examining division will resume examination. Otherwise, brief substantive feedback will be provided in the file.

There should, therefore, be no difference between observations filed before or after issuance of such a communication if they are relevant. In practice, however, observations filed after a Rule 71(3) communication are typically far less likely to result in further examination largely because, at that stage, an examiner has already got to the point where, as far as they are concerned, examination is finished and there is apparently little to no incentive to reopen examination. There may, in fact, be an incentive not to reopen examination if the examiner will have to spend more time on the application without getting any more points. Any observations would therefore have to raise a pretty serious issue for examining proceedings to be reopened. 

As a first example, let's say a divisional application is examined and goes straight through to allowance. Claim 1 as allowed in the divisional is shown below, along with claim 1 of parent application as allowed (and since granted). Notice any similarities? Clearly in this case the examiner had not examined compliance with the Guidelines on double patenting, particularly following G 4/19. This should not have happened, and third party observations clearly could not have been filed before issuance of the notice of allowance to bring this to the examiner's attention. Whether the applicant or their representative would notice and point this out to the examiner is impossible to tell, but they would presumably not have an incentive to do so, particularly if their main incentive is to get as many granted patents for their client as possible without much regard to quality or cost.  

Claim 1 of allowed divisional.

Claim 1 of granted parent.

So, what should be the effect of a third party filing observations pointing out the double patenting requirements to the examiner in this case? The Guidelines state that examination should be reopened, but only if the observations as "relevant" and, if they are not relevant, the examiner must provide a note to this effect on the file. In this example, it is clearly impossible to argue with a straight face that double patenting is not a relevant observation, so the examiner must reopen examination, which it turns out is what the examiner did. The communication of intention to grant was rescinded and a communication under Article 94(3) EPC issued pointing out the requirement to the applicant and asking them to make amendments. Examination for that application is consequently still underway as a direct result of third party observations being filed, and the applicant has indeed made some narrowing amendments. 

Let's take another example on a different issue of added matter, where the issue also came up only after a communication of intention to grant issued. Again, this relates to a divisional application, which had a fairly easy ride through examination and a communication of intention to grant issued with claim 1 in the following form:

In this case it is more difficult to see immediately what the issue is but, on analysing the claim features in relation to what was filed as the parent application (see below for a link to the register), it is clear that there were significant added matter issues. Third party observations were filed that pointed out this to the examiner, stating the following:

The observations were properly and clearly argued, and raised substantive issues that were not raised during examination. They were therefore clearly relevant. One would expect that this would result in examination being reopened and the A76 issues addressed in full. This is, however, not what happened. Instead, the examiner provided the following explanation of why the observations were not relevant and did not justify examination being reopened: 

I would hazard a guess that any vaguely competent European patent attorney with even a limited experience of dealing with added matter objections at the EPO would be surprised at these comments. This is not something we would expect to see coming from an examiner at all, but sound more like something coming from a representative trying to justify some tenuous intermediate generalisations for a divisional application that did not have direct and unambiguous basis for the combination of feature as claimed. The result was that examination was not reopened and the application could then proceed to be granted with claim 1 in the form as allowed. 

The lesson from these examples (if they can be considered representative at all) seems to be that third party observations have to be pretty damning for an examiner to be willing to reopen examination. I wonder how clear an added matter objection would need to be for an examiner to consider observations to be sufficiently relevant to reopen examination? Is there a hidden threshold of relevance that a third party has to meet? The Guidelines do not explain. Am I perhaps unfairly making a general rule out of an unusual example, or is this a more common occurrence? As always, comments are welcome.

For those wishing to investigate further, the applications in question are published as EP4092953 (double patenting) and EP4117228 (added matter). 

1 comment:

  1. Extraneous Attorney3 June 2024 at 15:51

    From my (admittedly not huge) experience with third party observations, I have concluded that they are useful only if you have clearly novelty-destroying prior art on hand, or if the applicant has filed claims which are still not novel in view of the prior art on file and there is a chance the primary examiner will miss the point. Observations on inventive step rarely work. Anything else -- Art. 83, Art. 123(2), Art. 84 -- simply does not stick.

    Perhaps more than a few examiners feel that Art. 83 and Art. 123(2) matters are best sorted out in opposition, and I understand why they may feel that way. The situation is more regrettable for Art. 84 as clarity cannot be raised in opposition per G 3/14.