Third Party Observations in China – Part 7 of an 8 Part Series

This is Part 7 of an 8-part series examining post-grant review proceedings, oppositions, and third party observations in the U.S., BRIC and several non-BRIC countries. To see Part 1, Post-Grant Oppositions in Japan, click here. To see Part 2, Third Party Submissions in Russia, click here. To see Part 3, Pre- and Post-Grant Oppositions in India, click here; To see Part 4, Third Party Submissions in the U.S., click here. To see Part 5, Third Party Submissions in Europe, click here. To see Part 6, Third Party Submissions in Brazil, click here.

Public Observations

Rule 48 of the Implementing Regulations of Chinese Patent Law provides that any person may, from the date of publication of an application for invention until the date announcing the grant of the patent right, submit observations to the State Intellectual Property Office (SIPO). Such third party submissions are referred to as “public observations”. Observations can be submitted by any person in its own name or anonymously (such as through a straw man).

Observations can be submitted for invention patents but not for utility model patents.   Any ground of rejection of a patent application can form the basis of an observation. Such grounds can include lack of novelty, lack of inventive step, sufficiency of disclosure, lack of unity, lack of clarity, ineligible subject matter, double patenting, etc.

SIPO has an official form that allows a third party to submit arguments forming the basis of the observations. This form can be submitted electronically, if desired. If a third party wishes to submit documentary evidence (such as evidence of patents, published applications, non-patent literature, etc.) supporting the observations, then the observations and accompanying evidence should be scanned in and submitted electronically. If any evidence is in a language other than Chinese or English, it is recommended that a Chinese translation be provided. There is no official fee for filing observations.

It is recommended that a third party submit observations as early in prosecution as possible (such as prior to issuance of an Office Action) to allow the Examiner sufficient time to consider the observations. A claim chart comparing the features of the claims with the prior art can be submitted to facilitate the Examiner’s understanding of the arguments submitted in the observations.

According to SIPO’s Guidelines for Patent Examination, the public will not be notified of the handling of any observations submitted. In fact, Examiners have discretion to consider observations once received. It is not known what criteria Examiner’s use to determine whether or not to consider observations once received. Additionally, SIPO does not provide any information on the effectiveness or success rate of such observations.

This post was written by Lisa Mueller and Feynman Z. Liang of the Jiaquan IP Law Firm

Third Party Submissions in the U.S. – Part 4 of an 8 Part Series

This is Part 4 of an 8-part series examining post-grant review proceedings, oppositions, and third party observations in the U.S., BRIC and several non-BRIC countries. To see Part 1, Post-Grant Oppositions in Japan, click here. To see Part 2, Third Party Submissions in Russia, click here. To see Part 3, Pre- and Post-Grant Oppositions in India, click here.

Third Party Submissions

The Leahy-Smith America Invents Act (AIA), enacted on September 16, 2011, modified the rules concerning third party submission of certain documents during the pendency of a patent application. Specifically, the new rules (1) expanded the time period during which a third party can submit documents; and (2) allows a third party to comment on each document submitted. The main objective of the third party or pre-issuance submissions program is to provide relevant information to Examiners early in the examination process and, as a result, improve the quality of granted patents.

The new rules became effective on September 16, 2012 and apply to any patent application filed before, on or after this date. Any third party (who can remain anonymous) who is not the patent owner, can submit patents, published patent applications or other printed publications of potential relevance during examination along with a concise description of the relevance of each document to the U.S. Patent and Trademark Office (USPTO). Potentially relevant documents submitted may be those raising questions of novelty, inventive step, written description enablement, indefiniteness, improper propriety claim, prior use, etc.

The time period for making such submissions is prior to the earlier of:

  1. The mailing date of a Notice of Allowance; or
  2. The later of:
    1. Six months after the date of first publication of the application by the USPTO (publication of a PCT application or re-publication of a U.S. patent application does not count); or
    2. The mailing date of a first Office Action on the merits rejecting the claims (a restriction requirement does not constitute a first Office Action on the merits).

The documents submitted must be filed prior to, not on, any of the above dates. Also, the filing a request for continued examination (RCE), does not reset the time period for making any such submissions.

There is no limit on the number of submissions that can be made, provided that each submission is made prior to the above dates. However, each submission must contain the following:

  1. A document list identifying the patents, published patent applications or other printed publication being submitted;
  2. A legible copy of all publications or portions of publications submitted (other than U.S. patents and patent applications);
  3. A concise description of the asserted relevance of each document;
  4. An English language translation of any non-English language documents;
  5. A statement by the submitting party stating that it is not an individual having a duty to disclose information to the USPTO and that the submission complies with the requirements of 35 U.S.C. §122(e) and 37 C.F.R. §1.290; and
  6. The required fee, if necessary (A $180.00 fee is required for every ten items or a fraction thereof submitted. However, if the submission is the first submission by a third party and three or fewer documents are being submitted, then no fee is required. Additionally, a small entity discount is available).

There is no requirement that the documents submitted be prior art. In fact, a third party can submit patents, published applications or other printed publications that are already of record (in other words, cumulative submissions are permitted). However, such documents cannot be submitted in provisional applications, issued patents or in a post-issuance proceeding (such as a reissue application or reexamination proceeding).

The description of relevance is a statement of facts regarding the patents, published patent applications or publications submitted. The description can be submitted as a narrative or as a claim chart and must explain how each item listed is of potential relevance to the examination of the application. The description must be more than a bare statement that one or more documents are “relevant”. Specifically, the description should draw the Examiner’s attention to the potential relevant pages or lines of the each document submitted and how it relates to the claims.  While there are no page limits, no arguments or conclusions regarding patentability are permitted. For example, statements such as the below should be avoided:

It would have been obvious to one of ordinary skill in the art to combine the teachings of publication X and publication Y to obtain Z as recited in claim 1; or

The composition of claim 1 is unpatentable in view of publication X and publication Y.

How useful are these third-party submissions in influencing Examiners at the USPTO?  Apparently, not very useful so far.  As shown below, the number of applications at the USPTO that received Office Actions after receipt of a proper third-party submission as of September 2014 was approximately 13%.

PIECHART

Source: USPTO – September 26, 2014 data available at: http://www.uspto.gov/sites/default/files/patents/init_events/preissuance_submission_statistics1.pdf)

It will be interesting to see whether over time third-party submissions become more effective in influencing Examiners during the examination process.

This post was written by Lisa Mueller.

 

 

 

Third Party Submissions in Russia – Part 2 of an 8 Part Series

This is Part 2 of an 8-part series examining post-grant review proceedings, oppositions, and third party observations in the U.S., BRIC and several non-BRIC countries. To see Part 1, Post-Grant Oppositions in Japan, click here.

Third Party Submissions in Russia

One of the most fundamental amendments to Russia’s Civil Code (Code) part IV “Rights to the Results of Intellectual Activities and Means of Individualization” relates to Article 1386.5 concerning third party observations of the patentability of an invention. This amendment, signed into law on March 12th, 2014 by Russian President Vladimir Putin, provides formal acceptance of observations to be submitted to the Russian Patent Office effective October 1st, 2014.

Under Article 1386.5, after publication of a patent application in Russia, any third party (who may use a straw man) may submit to the Russian Patent Office arguments regarding the compliance of the claimed invention with respect to the patentability requirements provided in Article 1350 of the Code.  The patentability requirements provided in this article are novelty, inventive step and that the invention be industrial exploitable.  There is no limit on the number of type or kinds of references that can be submitted (only that the references must be prior art). Such third party observations can be submitted up until the day the application is allowed by the Examiner. Finally, there is no official government fee for filing such observations.

Although third party observations were not previously prohibited and thus submissions were made to the Russian Patent Office, the enactment of this amendment means observations will at the least be considered during the examination of the challenged application.  Similar to other countries, a third party has neither the right to participate in the examination of the invention for patentability nor the right to communicate with the Examiner.

The primary obstacle that remains for Russia’s allowance of third party observations is the lack of public access to prosecution files, which renders it difficult to ascertain which challenged claims are on file.  The submission of such observations has played a significant role in opposition trials worldwide and it is yet to be seen what effect the legal acceptance of third party observations will have in Russia.

This post was written by Lisa Mueller and Kate Merath of Michael Best and Vladislav Ugryumov of Gowlings (Moscow).