Low Cost, High Efficiency: Sniping Power of Third-Party Observations
Yongjie SONG
Chinese Patent Attorney
Introduction
The Third-Party Observation (TPO) system acts significantly as an important pathway for public participation in patent prosecution. This system provides a legal channel for the public to participate in the patent grant process, and has become a strategic, cost-effective IP defense tool for enterprises. Compared to the post-grant invalidation declaration procedure, TPOs offer distinct advantages including lower cost, anonymity, and procedural initiative. To fully leverage this system, the key lies in seizing the optimal submission window, constructing multi-faceted, systematic arguments, and making dynamic adjustments—based on monitoring of the target application and timely communication with the patent office—so as to either prevent the grant of patent rights for the target application or narrow its scope of protection.
1. Legal Basis
Rule 54 of the Implementing Regulations of the Patent Law provides that “From the date of publication of an invention patent application to the date of announcement of the grant of a patent right, any person may submit observations to the Patent Administration Department of the State Council regarding a patent application that does not comply with the provisions of the Patent Law, along with a statement of the reasons therefor.” This rule forms the specific legal grounds for the TPOs system.
The above rule is refined based on Section 4.9 of Chapter 8, Part II of the Guidelines for Patent Examination (revised in 2023) as below: “Any observations submitted to the Patent Office by any person regarding an invention patent application that does not comply with the provisions of the Patent Law shall be filed in the file of the application and taken into account by the examiner during the substantive examination. Where such observations from the public are received after the examiner has issued the notification of grant of the patent right, they need not be taken into account. The Patent Office is not required to notify the person who submitted the observations of the outcome of the handling of such observations.”
Under the above provisions, the following key factors of the TPOs system can be summarized:
(1) Submission entity: Any person (anonymity allowed);
(2) Applicable target: Third-party observations shall only target invention patent applications, and do not apply to utility model or design patent applications;
(3) Submission window: From the date of publication of an invention patent application to the date on which the grant of a patent right to the application is announced;
(4) Main content: Observations regarding an invention patent application that does not comply with the provisions of the Patent Law. In practice, the observations focus primarily on objections to novelty and inventiveness, while other issues affecting the patentability of the application are of secondary importance;
(5) Legal status: The third-party observations are provided solely for the examiner’s reference. The patent office is not required to notify the observer of the handling outcome. In practice, examiners generally do not disclose the existence of third-party observations to the applicant.
2. Benefits
Compared to the post-grant invalidation declaration procedure, third-party observations offer the following benefits:
Procedural initiative at low cost: Third-party observations can be submitted as long as the target patent application has not yet been granted a patent right. By the submission of third-party observations, it is possible, at the cost of zero official fee, to effectively prevent the grant of a patent right to the target application or narrow its scope of protection, thereby reducing the risk of threats or lawsuits arising from the target patent once granted, and avoiding the potentially high costs of downstream proceedings such as invalidation or litigation.
Simple process without confrontation: Third-party observations can be submitted anonymously. Any observer may only submit written opinions and evidence to the patent office, and is not required to directly confront with the applicant of the target patent application.
Dynamic adjustment based on follow-up communication: After submission, the observer may contact the examiner by telephone to understand the examiner's preliminary position on the submitted observations. This provides an insight into the progress of the prosecution and enables the observer to submit supplementary observations and/or evidence as deemed necessary. In this way, there is an increased likelihood of the third-party observations being effective, thereby helping to steer the prosecution more accurately toward a favorable outcome.
3. Strategy and Tactics for TPOs submission
Phase 1: Submission
Third-party observations can be submitted at any time before the grant of a patent. In practice, however, the optimal window is from the publication date of the patent application until the issuance of the first Office Action. During this period, the examiner has not yet formed a preliminary conclusion and is generally more receptive to external information. Moreover, submission in this period leaves sufficient time for the observer to prepare well-drafted observations. On the other hand, submission of the third-party observations after the first Office Action has been issued will lead to a tight schedule. The time for preparing the third-party observations becomes critical due to the applicant’s response deadline and the internal pressure on the examiner to meet prescribed timelines, both of which can adversely affect the efficacy of the third-party observations.
In addition, early submission is advisable to preempt the risk of the target patent being granted directly. For example, the third-party observations can be prepared as soon as the target patent application is published and then submitted promptly.
Phase 2: Drafting
The third-party observations may primarily target the novelty and inventiveness of the application. However, other defects—such as insufficient disclosure, lack of support, or ambiguous claims—should not be overlooked, as they also undermine patentability. When prior art references located through search are not strong enough to challenge novelty or inventiveness directly, alternative lines of argument on these grounds can provide a critical breakthrough. It is also advisable to present multiple combinations of prior art references that undermine the novelty and inventiveness of the target application. This provides the examiner with additional perspectives should one combination prove unconvincing, thereby increasing the overall effectiveness of the third-party observations.
Phase 3: Monitor, Communication, Adjustment
Following the submission, it is advisable to monitor the subsequent prosecution of the target patent application. If the third-party observations are not taken or fully taken into account, it is possible to contact with the examiner by telephone to learn the examiner’s preliminary reaction to the observations as well as the considerations for disregarding the observations. This is instructive as to whether or not and when to submit supplementary evidence or more targeted technical analysis. Building on the communication with the examiner, additional evidence and/or grounds may be filed as needed at subsequent stages of the prosecution.
Conclusion
The Third-Party Observation (TPO) system is a strategic, cost-effective IP defense tool for enterprises. The key to leveraging it fully lies is to seize the optimal submission window, construct multi-faceted, systematic arguments, and adopt the dynamic strategy of “submission-monitor-communication-adjustment,” thereby fulfilling the strategic objectives of submitting the observations.
