Notice from the European Patent Office dated 5 July 2017 concerning the filing and processing of third-party observations under Article 115 EPC
1. Article 115 EPC enables third parties to present observations concerning the patentability of the invention to which a European patent application or patent relates. There are no fees for presenting such observations.
2.1 In May 2011, the EPO published a decision and a notice providing information about its practice regarding third-party observations, and announcing the introduction of a pilot scheme for filing them by means of an online form.[ 1 ] That notice is now being replaced by the present one, to take account of legal and technical developments since then[ 2 ] and provide more information about the procedural effects of third-party observations, especially if filed during the international phase.
2.2 Detailed information is provided by the Guidelines for Examination in the EPO,[ 3 ] the Guidelines for Search and Examination at the EPO as PCT Authority[ 4 ] and a dedicated section of the EPO website.[ 5 ]
3.1 Article 115 EPC applies only to published European patent applications and patents for which proceedings are pending before the EPO. During the international phase, third-party observations are processed in accordance with the PCT legal framework and must be filed with the IB using ePCT.[ 6 ] The following formal requirements apply to third-party observations filed under the EPC:
3.2 Observations may be filed anonymously.
3.3 They should be filed in their entirety in an official language of the EPO (English, French or German). If a non-anonymous third party files an observation in another language, the EPO will invite it to furnish a translation into an EPO official language. Supporting documents, e.g. prior-art citations, can be in any language. However, the EPO may require the third party to file a translation into an official language. If the required translation is not filed in due time, the EPO may disregard the observation and/or the supporting document.
3.4 Observations should not concern formal aspects, but be restricted to the substantive requirements of the EPC, e.g. Articles 52-57 EPC.
3.5 Use of the online form[ 7 ] is recommended, but there is no prescribed format for making observations, and existing methods for filing documents with the EPO may continue to be used.
Treatment of observations
4.1 Subject to the above formal requirements and after the removal of any offensive language, third-party observations are placed in the public part of the file of the patent application or patent and forwarded to the parties to proceedings.
4.2 All observations meeting the formal requirements will be considered by the examining or opposition division, which will then comment on their relevance in its next substantive communication to the parties to the proceedings. However, no communication will be issued where observations are received after the examining division has issued a communication under Rule 71(3) EPC and does not regard them as relevant.
4.3 If applicable, the observations will be considered when the European search report and opinion on patentability are being drafted.
4.4 The third party is not a party to the proceedings before the EPO and will, therefore, not be informed about the proceedings. However, the progress of the proceedings can be followed online using the European Patent Register, which includes an email alert service.
Expediting the next office action
5.1 The EPO makes every effort to issue the next office action within three months of the examining division's receipt of a third-party observation, provided the third party has substantiated the observation and has not filed it anonymously. If, when the observation is received, a reply from the applicant to a communication is outstanding, the three-month period starts when the EPO receives the reply.
5.2 Observations filed during the international phase are taken into account in the procedure before the EPO as designated/elected Office as set out below:
5.2.1 The contents of the observation will be considered once it is available to the EPO and upon effective entry into the European phase.
5.2.2 Provided the examining division has assumed responsibility, the EPO will make every effort to issue the next office action within three months after expiry of the period under Rule 161 EPC if
- the entire observation was filed in an EPO official language (cf. point 3.3),
- the third party has clearly expressed its wish that the next office action in the European phase be expedited,
- the observation was not filed anonymously and
- the third party has substantiated it.
A third party wanting the next office action in the European phase to be expedited should, therefore, express this wish in the observation submitted in the international phase. Alternatively, once the application has entered the European phase, the third party may refile the observation with the EPO as designated/elected Office or refer the EPO as designated/elected Office to its observation filed earlier with the IB.[ 8 ]
5.2.3 Here are two examples illustrating how the EPO will proceed.
Example 1: International application A was filed with the USPTO as receiving Office. The EPO was selected as ISA. Third party T1 filed a non-anonymous observation on novelty with the IB in English 27 months after the priority date, without expressly asking for the next office action in the European phase to be expedited. The IB forwarded the observation to the EPO as designated Office after expiry of 30 months from the priority date. The application entered the European phase within the 31-month period under Rule 159(1) EPC.
T1 did not ask for the next office action in the European phase to be expedited. Hence, the EPO will consider the contents of the observation, but will expedite the next office action in the European phase only if T1 refiles the observation non-anonymously with the EPO as designated Office or non-anonymously refers the EPO as designated Office to the observation filed earlier with the IB.
Example 2: International application B was filed with the JPO as receiving Office. The JPO was selected as ISA. Third party T2 filed a non-anonymous observation on novelty with the IB in Japanese 27 months after the priority date, expressly asking for the next office action in the European phase to be expedited. The IB forwarded the observation to the EPO as designated Office after expiry of 30 months from the priority date. The application entered the European phase within the 31-month period under Rule 159(1) EPC.
As the observation is not in an EPO official language, shortly after expiry of the 31-month period the EPO will invite T2 to file a translation (cf. point 3.3). When the EPO receives the translation, it will see that T2 wants the next office action to be expedited. It will then consider the contents of the observation when drawing up the supplementary European search report and expedite the first office action in the examination phase.
[ 1 ] See OJ EPO 2011, 418 and 420.
[ 2 ] In particular, the EPO is facilitating the use of means of electronic communication for submitting third-party observations (see decisions of the President of the EPO, OJ EPO 2011, 418; OJ EPO 2014, A98; OJ EPO 2015, A26; OJ EPO 2015, A27; OJ EPO 2015, A91).
[ 3 ] Part E-VI, 3.
[ 4 ] Part E-I.
[ 5 ] Available at www.epo.org/service-support/faq/online-services/faq.html.
[ 6 ] See Administrative Instructions under the PCT, Sections 801 – 805, PCT Newsletter No. 07-08/2012, 17, and the latest version of WIPO's User Guide available at www.wipo.int/export/sites/www/pct/en/epct/pdf/epct_observations.pdf.
[ 7 ] Available at http://tpo.epo.org/tpo/app/form/. In the European Patent Register, the form can be accessed by clicking on the link "Submit observations".
[ 8 ] See the Guidelines for Examination in the EPO, 2017, Part E-VI, 3; the Guidelines for Search and Examination at the EPO as PCT Authority, Part E-I.