[Patentpractice] Third-Party exparte Challenge to Pending Application

Mon Feb 19 07:40:09 EST 2024

Rick,

Just a few comments on pre-grant third party observations before the EPO.

First, one anecdote is not useful, but a lot of anecdotes become anecdotage and I have had enough experience to know what does (usually) work and what doesn’t (usually) work. The (usually) is because every fact situation is different, and every examiner is differenter.

Content of observation

In general, merely submitting a piece of art, saying what is in common with the claims, and inviting the examiner to have a look has a much lower chance of success than providing a reasoned argument of why claims should not be allowed. The EPO is happy for the third party to prevent not just facts but also conclusions and indeed welcomes a substantiated argument – even if they don’t agree. Indeed, if in effect you write the examiner’s next office action for them (or at least the important paragraphs), this appears to be helpful.

Where inventive step is concerned, an argument phrased in problem-and-solution approach language has a much higher chance of success than if phrased otherwise.

Although observations are in principle limited to Article 52-57, in practice (because they do not like to grant invalid patents) the EPO will receive observations including other grounds such as clarity and unallowable amendments https://www.epo.org/en/legal/guidelines-epc/2023/e_vi_3.html. The clarity point is particularly important as clarity cannot be challenged post-grant. It is usually better to see a clear patent that is clearly not infringed than an unclear patent that might be infringed.

If you are attempting to show prior use, the standard applied in the EPO is high, and since the person filing the observations is not a party such cases are probably best reserved to opposition.

Treatment of observations

Depending on timing, the observations will either be put on file and not considered (rare); not put on public file and only revealed if there is subsequent opposition or limitation procedure (believed rare); considered by the examining division on the next office action.  The extent of feedback on consideration ranges from “we’ve seen it” to “good point, the applicant needs to do something” but I find it rare that there is any explanation of examiner thinking.

Accelerating prosecution

Where the observations have been substantiated, and have not been filed anonymously, the EPO endeavour to issue the next communication within three months.  This can be very helpful.

Multiple observations
It is not uncommon to submit several sets of observations over time, as the applicant tacks one way or another, additional art or argument being successively presented to limit their options.

Estoppel

There ain’t none.

Anecdotage

If one has good art, and act early in the procedure, the chances of success are high. This is particularly so if the aim is to cut an application down to size, rather than to kill it completely.

Non-anonymous observations (which do not need to be filed in the name of someone having any interest in the matter) often work at unjamming the examination process and getting early clarity.

Some examiners appear to be unable to read, which is unfortunate given the nature of their job. There will be perfectly sound observations that fail to get traction.

Sometimes third party observations represent a useful rehearsal. I have in the past re-submitted third party observations (with a little padding) as an opposition only to find the opposition undefended.

In short, third party observations before the EPO are a very useful tool in the right circumstances. The usage of third party observations continues to grow, even as the use of opposition declines. A coincidence?

Jim

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From: Pate ntpractice <patentpractice-bounces at oppedahl-lists.com> On Behalf Of Rick Neifeld via Patentpractice
Sent: Friday, February 16, 2024 11:00 PM
To: Timothy Snowden <Timothy at thompsonpatentlaw.com>; patentpractice at oppedahl-lists.com
Cc: Rick Neifeld <rneifeld at neifeld.com>
Subject: Re: [Patentpractice] Third-Party exparte Challenge to Pending Application

Timothy - Yes, and yes.
But I do not think anecdotal experience is relevant. Each case varies on its own facts and under the relevant jurisdictional law.

Best regards, Rick Neifeld, Ph.D., Patent Attorney
Neifeld IP Law PLLC
9112 Shearman Street, Fairfax VA 22032-1479, United States
Office: 1-7034150012
Mobile: 1-7034470727
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On 2/16/2024 3:46 PM, Timothy Snowden wrote:
Hi Rick – have you had any experience with these proceedings? I'm curious whether you have any sense for whether the Examiner in that office would do anything with a prior art submission? I'd be interested what your (and anybody else's!) thoughts are on EPO & WIPO proceedings from a practical application – does it do any good? If so, it would be interesting as an extra tool in the toolbox we could start making heavier use of in some scenarios.
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From: Patentpractice <patentpractice-bounces at oppedahl-lists.com><mailto:patentpractice-bounces at oppedahl-lists.com> on behalf of Rick Neifeld via Patentpractice <patentpractice at oppedahl-lists.com><mailto:patentpractice at oppedahl-lists.com>
Sent: Friday, February 16, 2024 11:22 AM
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Cc: Rick Neifeld <rneifeld at neifeld.com><mailto:rneifeld at neifeld.com>
Subject: Re: [Patentpractice] Third-Party exparte Challenge to Pending Application

Keep in mind there are similar 3rd party submission procedures in the major offices. See for example slides 2-9 in "Company Perspectives, Procedures and Best Practices in View of the AIA<https://urlsand.esvalabs.com/?u=https%3A%2F%2Fwww.neifeld.com%2Fpubs%2FNeifeld_IEEE_10-19-2012.pdf&e=b2b682c0&h=5ad4fd89&f=y&p=y>" Presented by Rick Neifeld at IEEE-USA, Arlington, VA, October 19, 2012.

Best regards, Rick Neifeld, Ph.D., Patent Attorney
Neifeld IP Law PLLC
9112 Shearman Street, Fairfax VA 22032-1479, United States
Office: 1-7034150012
Mobile: 1-7034470727
Fax: 1-5712810045
Email: rneifeld at neifeld.com<mailto:rneifeld at neifeld.com>
and richardneifeld at gmail.com<mailto:richardneifeld at gmail.com>
Web: https://neifeld.com/<https://urlsand.esvalabs.com/?u=https%3A%2F%2Fneifeld.com%2F&e=b2b682c0&h=f5ea5ac2&f=y&p=y>
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On 2/8/2024 2:46 PM, Doreen Trujillo via Patentpractice wrote:

not followed the success rate with these things in terms of affecting prosecution. If you submit the publications with an explanation of the relevance and the claims get allowed anyway, you have probably made it harder for your client to invalidate the patent based on those same publications. And if you yourself appear as the attorney of record on your client's own patents, then if you're the one who makes the third-party submission, the competitor will be able to more easily figure out who's behind the submission (which doesn't need to identify the real-party-in-interest, but only the party actually making the submission). So you might want to consider having a different attorney make the filing. Or, you can go the tried-and-true route of bringing the publications to the attention of the applicant's attorney, who will in all likelihood then want to disclose the pubs in an IDS. The examiner make still allow the case, but there will be no discussion in the record of the relevance, thus leaving an easier path to make such arguments yourself in subsequent adversarial proceedings.

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