As of July 2, 2012, third parties can submit “observations” in published PCT applications via the ePCT Public Service system. It is interesting to compare this service with the expanded ability of third parties to make Preissuance Submissions under new 35 USC § 122(e) (created by the America Invents Act), which takes effect on September 16, 2012. As with that program, only time will tell how many third parties will make the effort to bring potentially relevant prior art to the attention of patent examining authorities.
ePCT Third Party Observations
According to the WIPO guidance document, the ePCT Third Party Observations service is designed to permit third parties to submit information that they believe shows that the invention claimed in a PCT application “is either not new (lacks novelty) or is obvious (lacks inventive step).”
WIPO highlights the following as “key points” of the system:
As I was reviewing the instructions for making a Third Party Observation, the following tidbits caught my attention:
What Happens Next
As explained by WIPO, after a Third Party Observation has been accepted (e.g., has been reviewed for formalities) the following will occur:
Comparison To U.S. Preissuance Submissions
My initial impression is that it may be easier to use the ePCT Third Party Observations service than to make a Preissuance Submission under 35 USC § 122(e) when that option becomes available for certain pending U.S. patent applications on September 16, 2012. (See this article for a review of the USPTO’s proposed rules for U.S. Preissuance Submissions.) For example, the ePCT system appears to require less information regarding the Third Party and appears to impose fewer formal requirements on the document citations (although some requirements may be imposed by the ePCT on-line interface). Additionally, while the proposed rules for U.S. Preissuance Submissions waive the fee for the first submission for a given application, the there appears to be no fee for ePCT Third Party Observations. On the other hand, ePCT Third Party Observations are limited to ten citations per observation and ten observations per application, while there are no such absolute limits for U.S. Preissuance Submissions.
Both the ePCT Third Party Observations service and the U.S. Preissuance Submissions have strict time limits on when submissions can be made, so competitors who may be interested in making such submissions should monitor both WIPO and USPTO databases to identify applications of interest as early as possible.