Authored by Elizabeth A. Doherty, Ph.D. and Martin D. Hyden
Due to recent changes in European Patent Office procedures, EPO third-party observations deserve a fresh look. Indeed, well-crafted EPO observations can be highly valuable weapons in the battle for freedom to operate. In some circumstances, they can also be readily coordinated with U.S. Patent and Trademark Office submissions to challenge patent claims in both jurisdictions.
Oppositions vs. Observations
Compared to oppositions, third-party observations have been rarely used, according to the informal evidence available. This might be due to concern that the observation filer is not a party to the proceedings and may have less influence than an opponent, or to concern that, if the examining division does not recognize the merits of an observation, making the same arguments later in an opposition may be more difficult.
Oppositions, however, also have their own disadvantages. First, of course, the challenger must wait until a patent issues before acting. Second, oppositions can take years to resolve and can be relatively expensive to pursue, particularly if the matter is appealed. The result might be years of uncertainty, especially where the issued patent blocks freedom to operate in a critical area.
On the other hand, a persuasive observation may clear a freedom-to-operate hurdle before any patent even issues, and at a much lower cost. Moreover, as many companies now regularly track the prosecution of competitors' pending patent applications on-line using the European Patent Register or the USPTO's Patent Application Information Retrieval system, they may have already developed arguments that could serve as the basis for an observation.
Observation Grounds and Procedures
Observations under Article 115 of the European Patent Convention may be submitted on a variety of patentability grounds, including novelty, inventive step, sufficiency under Article 83, patentability under Articles 52(2), 52(3), 53 and 57, unallowable claim amendments under Articles 76(1) and 123(2), and clarity under Article 84, which cannot be a ground for opposition. They may be submitted anonymously, in English, French or German, and require no filing fee. They may be submitted at any time after publication of a pending application, including after a patent applicant has received a Rule 71(3) communication, indicating the EPO's intent to grant a patent.
They may also be submitted in an ongoing opposition, as well as during appeal proceedings. The EPO especially values observations that are "well-structured and concise," and notes that "[o]bservations containing particularly relevant objections can also considerably reduce the length of the [examination] procedure." (See notice from the European Patent Office concerning the filing of third-party observations under Article 115 EPC by means of an online form (issued May 10, 2011).)
Perhaps recognizing the value of persuasive observations, the EPO now requires that the examining or opposition division "comment on the relevance of the observation in the next communication to the parties of the proceedings." Id. To make filing observations simpler, the EPO also created a dedicated Internet site for their submission. Id.
Particularly where one has strong arguments against patentability that can be stated concisely, observations should be considered seriously as a means to improve freedom to operate.
One possible strategy, in tracking a competing application, is to evaluate filing an observation or opposition upon the application's receipt of a Rule 71(3) communication indicating that the application is allowable. Where arguments are strong and easy to explain, an observation may be filed in the hope of forcing the applicant to further narrow the claims before any patent issues. In other cases, an opposition may be considered after the patent issues. Furthermore, an observation may be used to raise a clarity issue, which cannot be raised in a later opposition.
Coordination with USPTO Prosecution or Post-Grant Proceedings
In certain cases, an EPO observation can be coordinated with pre- and post-grant submissions in the USPTO to challenge patents or applications in both jurisdictions. For example, as of Sept. 16, 2012, the USPTO now has its own form of third-party observation called a preissuance submission. See 35 U.S.C. § 122(e); 37 C.F.R. § 1.290.
Preissuance submissions are more limited than EPO observations. They may only be submitted in pending applications prior to examination on the merits and cannot be submitted in a post-grant proceeding such as a reissue or re-examination. They are also restricted to arguments related to printed publications. See 35 U.S.C. § 122(e); 37 C.F.R. §1.290. But, like observations, they are relatively cheap to submit and can be filed anonymously. See Id.
While USPTO preissuance submissions are a new procedure whose effects remain to be seen, and while U.S. attorneys also often prefer to save their best arguments for later litigation, preissuance submissions have some distinct advantages when one considers the alternatives.
The USPTO's new post-grant procedures, for example, have initial filing fees in the tens of thousands of dollars, cannot be filed anonymously, and may substantially limit arguments that can be made in a later litigation against the patent holder. Thus, where arguments are strong and simple to explain, and are based around published materials, coordinating an EPO observation with a USPTO preissuance submission may be an inexpensive one-two punch against pending applications in both jurisdictions.
EPO observations might also influence USPTO proceedings in other ways as well. For example, patent applicants in the USPTO have a duty to submit information of which they are aware that is material to patentability. See 37 C.F.R. § 1.56. This may include information submitted in prosecution or opposition proceedings outside the United States. This duty of candor exists in both pending applications and post-grant proceedings until a patent issues or the proceedings terminate. Filing an observation in a parallel EPO proceeding might provoke the patent applicant to submit, not only the observation to the U.S. examiner, but also the EPO's response to the observation, in the USPTO, in order to avoid a risk of the U.S. patent being found unenforceable.
Likewise, an EPO observation may also be used to ensure that the EPO examining or opposition decision considers unpatentability arguments raised in parallel proceedings in other jurisdictions, such as the USPTO. For example, arguments raised in a USPTO post-grant proceeding may similarly be reformatted and submitted as an EPO observation during a parallel EPO opposition, so long as the observation filer is not a party to the opposition.
Thus, EPO observations may be valuable tactical tools in the fight for freedom to operate in a variety of situations, and deserve a serious second look.
Originally printed in Law360 (www.law360.com). Reprinted with permission. This article is for informational purposes, is not intended to constitute legal advice, and may be considered advertising under applicable state laws. This article is only the opinion of the authors and is not attributable to Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, or the firm's clients.