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How to make effective third party observations




Yuejing Li and Shihua Chen of DEQI describe the role of third party observations and their proper use in protecting IP rights in China

If a given company's patent application is found to be a menace to our products, we can find some ways to prevent the grant of that patent application. Submitting third party observations (TPOs) is one such way. Specifically, the TPO system, as an auxiliary system for patent examination, is where a third party submits observations that the original claims of a certain patent application do not meet the requirements for being granted.

In China, third party observations are known as public observations.

Relevant ordinances

Rule 48 of the Implementing Regulations of the Chinese Patent Law states that any person may, from the date of publication of an application for invention until the date of announcing the grant of the patent right, submit observations to the State Intellectual Property Office (SIPO). Such observations may describe aspects of the application which do not conform to the provisions of the Patent Law.

Section 4.9 chapter VIII part II of the Guidelines for Patent Examination states that observations submitted by anyone to the Patent Office on an invention application not in conformity with the provisions of the Patent Law should be included in the application file. The examiner should consider the observations in the course of substantive examination. It is not necessary for the examiner to consider the observations submitted after the issuance of the notification to grant the patent right. The public concerned will not be notified of the handling of the observations submitted by them.

Anyone has the right to submit TPOs. In China, you can submit the TPOs anonymously or under your real name. However, TPOs are only applicable to invention patent applications in China. From this point of view, the limitation in China is stricter than that in the US, Japan and other countries. In the US, TPOs can be submitted for a non-provisional utility, design, or plant patent application, as well as for any continuing application. In Japan, TPOs can be submitted not only for patent applications for invention and utility models which are to be granted, but also for those which have been granted.

In China, the public concerned will not be notified of the handling of the observations they submit. This differs to Japan and the US. In Japan, if the public submitting the observations requests feedback, the examination committee will notify them of the TPO result. In the US, the Patent Office will notify the third party of non-compliance via the email address provided and will include the reasons for such non-compliance.

How to submit TPOs

TPOs can be submitted from the date of publication of an application for invention until the date of announcing the grant of the patent right.

In practice, a statement of observations can be used for which SIPO provides an official form. At present, electronic submission is allowed when this observations form is used. However, if other documentary evidence is annexed to the observations form, the electronic submission is not applicable. That is, the observations form together with other documentary evidence can be only submitted on paper.

There are no provisions at present to prescribe the grounds on which the TPOs are based. In practice, TPOs are mainly submitted according to Rule 53 of the Implementing Regulations of the Chinese Patent Law. The grounds may include lack of novelty, lack of inventive step, lack of unity (the Japanese Patent Office and the European Patent Office do not allow TPOs based on lack of unity), lack of clarity, insufficient disclosure, ineligible subject matter, and double patenting.

There are no official fees for submitting TPOs.

How to make your TPOs count

To make the most of your TPOs, it is advisable to submit them as early as possible, rather than after the examiners have issued the office action and are ready to grant the rights. It would be better that the TPOs are submitted before the examiners start retrieval.

If possible, it is recommended that documentary evidence such as non-patent or non-English patent literature should be contained in the submitted TPOs, as it is more difficult for examiners to retrieve such literature than Chinese or English patent literature. If foreign language literature is submitted, it is better to annex this with a Chinese translation so that the examiners can easily follow it.

The TPOs should be as convincing as an office action made by an examiner. If necessary, it is better that the technical feature comparison table (claim chart) is submitted so that the examiner can make a determination more easily.

When the TPOs are submitted because the patent application does not possess novelty and inventive step, it is better to use the publications instead of evidence based on the prior use of the submitter. Because the submitter will not become a party to the examination procedure, they will not be invited to provide any evidence that is lacking or be able to explain and develop their prior use.

At present, SIPO does not provide any specific data on examiners' adoption of TPOs. According to a survey on applications examined by the Japan Patent Office – JPO – during December 2012, the percentage of examiners' actual adoption of TPOs in Japan is up to 72%.

According to SIPO's Guidelines for Patent Examination, the public concerned will not be notified of the handling of the observations submitted by them. So how can they find out whether the TPOs have been adopted?

The public cannot be informed directly, but can get information from the office action issued by SIPO. If the patent application date is before February 10 2010, it is possible to get the office action through the online Chinese Patent Inquiry System (http://cpquery.sipo.gov.cn/), to find out whether the examiner has adopted the TPOs. This system is provided with a user interface in eight languages – Chinese, English, German, French, Japanese, Spanish, Korean and Russian, and its data is updated weekly.

Comparison table with USPTO, EPO and JPO
Item SIPO USPTO EPO JPO
Corresponding ordinances Rule 48 of the Implementing Regulations of the Chinese Patent Law. 37 CFR 1.99 Article 115 EPC;rule 114 EPC. Article 13, the Implementing Regulations of the invention Law; article 22, the Implementing Regulations of the Utility Model Law.
Applied objects Only pending invention patent applications. Non-provisional utility, design, or plant applications, as well as in any continuing application, even if the application to which the submission is directed has been abandoned or has not been published. Pending applications for invention or utility model patents. Pending applications for invention or utility model patents.
Submission date From the date of publicising an application for an invention patent to the date of publicising the grant of the patent right. Within six months of the patent application being published or before the first office action is issued (whichever is later), and before the Notice of Allowance is publicised by the USPTO. After the publication or grant. After the publication or grant.
Anonymous submission Yes Yes Yes Yes
Electronic submission Yes Yes Yes Yes
Format of the submitted documents No provisions, but the statement of observations is used in practice. Form PTO/SB/429 (or equivalent document list). Letters and notifications, or filling out the form at http://tpo.epo.org/tpo/app/form/. Form 20, the Implementing Regulations of the Patent Law.
Language of relevant parts of the documentary evidence Chinese or English. English (machine translation is acceptable). English, German or French. Japanese or English.
Official Fees None It is free for the first submission and including three documents or less. $180 is charged per ten documents submitted. None None
Can anyone browse the TPO No Yes Yes Yes
Examiner’s feedback of whether the TPO are adopted No Yes No Yes
The number of the received observations Unknown Approximately 1000 Approximately 1000 Approximately 7000
Others China cancelled the patent opposition system in 1992. The US has the patent opposition system, and this is one of the reasons for the relatively low number of TPO cases. Europe has the patent opposition system, and this is one of the reasons for the relatively low number of TPO cases. Japan cancelled the patent opposition system in 2004, and this is one of the reasons that the number of TPO cases has increased.

Pros and cons of the TPO system

There are a range of advantages to the TPO system. For instance, measures can be taken earlier to prevent rights being granted as requested in the original claims of the application, or to delay the grant of the patent.

Further, the costs are lower than those incurred by invalidation procedures. The procedure of submitting TPOs is simple, and people can submit observations anonymously.

Non-reciprocity is a major disadvantage of the TPO system. According to the Guidelines for Patent Examination, TPOs are used as a reference and do not need to be answered. Therefore, the submitter cannot directly intervene in the substantive examination procedure.

The patent applicant can discuss and communicate with the examiner through interviews or amendments, while the submitter cannot communicate with the examiner during examination. For cases where the TPOs are adopted but need some degree of further explanation or are unclear to some extent, the results may therefore not satisfy the demands of the public submitting the observations.

Generally speaking, the ability to amend a patent application before acceptance or allowance is greater than the ability to do so afterwards. In some circumstances, therefore, waiting to alert a patentee to relevant prior art until more restrictive amendments (and divisional) provisions apply can have a greater impact.

Submitting TPOs may also alert the applicant to cope with the application more carefully, so that it is then granted. Learning that the TPOs have been submitted, the applicant, even without this previous intention, will make some divisional applications for the same application and thereby have more patent rights granted. In this way, the public submitting the TPOs will be put in a more passive position.

Comparison with USPTO, EPO and JPO

On the following page is the table for comparing the TPO system as used by SIPO, the USPTO, the EPO and the JPO. To some extent, China's TPO system is stricter than that of the US, Europe and Japan and is not as open. Japan and is not as open. As shown in the table, TPOs in China can only be raised for invention patent applications, non-related public cannot have access to TPOs, and examiners will not notify the public submitting the TPOs as to whether the TPOs are adopted.

In SIPO's survey, where around 200 patent examiners were asked how many TPOs they had received up to now, more than 80% said they had received fewer than five TPOs. The TPO system is not used as commonly in China as in Europe, the US and Japan. In the survey, many examiners expressed that TPOs are favourable for improving the quality of examination and shortening the time of examination, and as such, TPOs are welcome by examiners in China.

The TPO system is being taken seriously in many countries. In July 2012, the TPO system was introduced in international Patent Cooperation Treaty applications. In January 2013, it was introduced in Taiwan's new Patent Law. In China, with the public's focus on IP rights intensifying, the use of intellectual property by businesses enhanced, and the quantity of patent cases examined significantly increased, the voice calling for improving the TPO system as an assistance to examination rises. Herein it is expected that the TPO system will be improved as early as possible so that reinforcement of the intellectual property protection can be sped up in China.

Yuejing Li

 

Yuejing Li is a patent attorney at DEQI IP Law Corporation. She holds a BA in Japanese language & literature from Nankai University and an MA in Japanese literature from Beijing University. Then she graduated from Beijing University of Chinese Medicine with a major in medicinal chemistry. She also passed the national bar examination.

Yuejing has practised IP law for 10 years, and has extensive experience in patent searching and analysis. She has varied experience in the translation of patent-related documents from Japanese to Chinese, and vice versa. Further, as a senior IP lecturer, she teaches foreign clients on strategy for patent searches, analysis and translation. Yuejing is a member of the All-China Patent Agents Association.


Shihua Chen

 

Shihua Chen is a patent attorney at DEQI IP Law Corporation. She holds an MSc and BSc in biomedical engineering from Capital Medical University, and has worked as a hospital-based medical engineer and carried out research into medical image processing for three years.

Shihua has practised IP law for 11 years. She focuses on drafting and prosecuting patent applications and patent reexaminations in medical devices, electronics, software, network and telecommunications. Her expertise also extends to patent searches and advising clients on patent strategy and IP management. She is a member of the All-China Patent Agents Association.



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