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Third Party Observation in Patent Prosecution in China
In practice, companies regularly search the competitors's related published patent applications to determine whether they pose a threat to their own market activities. If necessary, companies can consider using the third party observation to block the granting of a competitor’s patent application, or to narrow down the scope of protection of its claims, so as to eliminate the risk of infringement for companies’s own products.
Third party observation, also referred to as third party submission, public opinion, or information submission, is a common and only means to challenge the target patent applications before its granting in China.
The Implementing Rules of the Chinese Patent Law stipulate that from the date of publication of the invention patent application to the date of the announcement of the grant of the patent right, anyone can submit an opinion to the CNIPA and explain the reasons why the patent application does not comply with the provisions of the Patent Law.
The Patent Examination Guidelines stipulate that the third party observation should be put into the patent file wrapper for consideration by the examiner during the substantive examination. If the third party observation is received after the examiner has issued the notification to grant the patent right, it does not need to be considered. The CNIPA does not need to notify the third party of their handling of the observation.
From the regulations, we know
♦Any individual, enterprise or institution is entitled to submit the third party observation anonymously. Through inquiries, one can see the submitting records as the intermediate documents in the Chinese Patent Inquiry System, but can't see the specific content. Moreover, the content of the observation cannot be retrieved from the CNIPA as the CNIPA set rules on the confidentiality of the observation.
♦The timing to submit a third party observation is from the date of publication of the invention patent to the date before the examiner issues the notification of grant of the patent right. It is recommended to submit the observation as soon as possible so that it can be considered by the examiner in the first office action.
If the patent is granted, the patent right can only be invalidated through the post-grant proceedings. In contrast, submitting third party observation during the patent prosecution period is more concealed, more cost-effective, and time-saving. It is one-fifth to one-sixth of the expenses for the patent invalidation proceedings.
♦The content of the third party observation can be any evidence and reason that prevents the patent from being granted or narrows the scope of protection of the claims, that is, the reason suitable for all patent rejections. It is important to submit evidence and reasons for undermining novelty and inventive steps, so it is usually necessary to do a search to obtain strong prior art.
♦Currently, there are two ways to submit third party observation, by post and in person. Examiners usually would not notify the applicant of the receipt of the observation. The examiner would also not tell the submitter whether she has adopted the opinion. After all, anonymous submitters are beyond reach.
♦Monitoring of third party observation is necessary. After the submission is made, the follow-up monitoring of the target patent application can be conducted to see whether the examiner has made reference to the prior art proposed in the observation, and confirm whether the applicant has corrected the defects in the patent application. If necessary, the observation can be submitted once again with supplementary evidence and arguments.
►Someone may ask, what is the success rate of third party observation? For this, I have made a survey of all the third party observations that we have handled, and found that above 70% of the prior art or arguments we submitted were adopted by examiners. At present, the CNIPA has been following a stricter examination standard than a few years ago, so we believe that the success rate will increase.
►Some may ask, will the evidence that has been considered in the substantive examination stage not be considered in the invalidation stage? In other words, will the third party observation have a negative impact on the use of the same reasons and evidence in the invalidation stage?
Generally speaking, the answer is no, unless the third party observation has been evaluated by the collegial panel in the patent reexamination stage. Normally, in the invalidation stage after granting, the collegial panel who examines invalidation request should make another judgment independently, rather than directly refers to the opinions of the substantive examination.
If the examiner does not use the reasons and evidence in the third party observation at all, this will not affect the reconsideration of the same evidence and reasons in the subsequent proceedings. If the reasons and evidence are adopted by the examiner, but the patent application is granted by the applicant’s amendment or arguments, in this case, the chance of these evidence and reasons being reused in the post-grant proceeding depends on whether the granting is reasonable.
We have previously used the evidence in the substantive examination stage to successfully invalidate the granted patent. This is because the examiner’s understanding in the substantive examination stage is incorrect or her comments are inappropriate. The collegiate panel accepted our opinion in the invalidation stage.
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We have much experience in handling the third party observation. If you have further questions, feel free to let us know and we would be pleased to help.
