Intervening in the Examination of Competitors’ European Patent Applications

In a world where innovation and patents are crucial to maintaining a competitive edge, monitoring your competitors' patent applications can provide valuable insights and an opportunity to act before a patent is granted. But what should you do if you identify a patent that could potentially hinder your business? By intervening in the examination of competitors' European patent applications, you can proactively influence the scope of their protection. Read on to discover how Third Party Observations can help safeguard your business and challenge potential obstacles before it’s too late.

Companies working in competitive markets often monitor their competitors’ patenting activities. Such monitoring can include monitoring newly published patent applications from their competitors. By monitoring new publications, new patent applications can be discovered as soon as they are published (usually after 18 months from the date of filing). After the competitor’s patent application has been published, it is possible to monitor the examination thereof in detail by monitoring the publicly available register/file wrapper of the patent application. By doing so, it is possible to determine the current scope of protection of the pending claims, and possible next steps in the examination, which can for example be intention grant, further argumentation/claim restrictions or rejection of the application.

In cases where the scope of protection is a potential problem, several courses of action are possible.

Challenging European Patents

As my colleague Mattias Forsblom has covered in his blog post “Challenging of European patents”, the validity of an already granted European patent may be challenged in different ways. Under the European Patent Convention, an opposition against the European patent may be filed with the EPO within 9 months of the mention of the grant. The outcome of the opposition procedure will have effect in all states in which the European patent was validated. If Unitary Effect has been requested for the European patent and/or if no request to opt-out from the Unitary Patent Court’s jurisdiction, it is also possible to file a revocation action with the Unitary Patent Court. The outcome of the UPC revocation action will have effect in all countries where the European patent has been validated, or, if unitary effect of European patent has been requested, in all countries having ratified the Agreement on a Unified Patent Court (at present 18 countries).

Third Party Observations

Under the European Patent Convention, there is also a possibility to file “Third party observations” (TPO) which allows anyone to file observations concerning any European patent application pending at the EPO. This allows anyone to submit arguments (and prior art documents, if available) concerning the patentability of the invention.

The form of the submission can be similar that of an opposition and may include arguments concerning for example, lack of novelty and inventive step. The TPO can be submitted at any time before the date of grant of the European patent application, i.e. even after the “Intention to grant” has been issued.

Considering the limited time the Examining Division at the EPO has for examination of each application, it is advisable to make a TPO less comprehensive than an opposition to make sure that the Examining Division at the EPO has time to fully consider the arguments. For the same reason, it is also advisable to submit the TPO as early as possible during the examination procedure.

In our experience, TPO's can be quite effective assuming that the arguments are strong and presented in a concise manner such that they can easily be picked up by the EPO.

Advantages and Disadvantages of Third Party Observations

There are several advantages with a TPO over an opposition or revocation action. Firstly, there is no EPO official fee for filing a TPO, thus making TPO's cost effective. Secondly, a TPO can include arguments concerning lack of the clarity of the claims (which is not possible in opposition and revocation actions). Thus, there are more possibilities to attack the claims. Thirdly, TPO's can be submitted completely anonymously. Depending on the relationship between the competitor/applicant and the observer filing the TPO, this can be an advantage. It should be noted however that the EPO will make every effort to issue its next Communication within three months from the filing of the TPO, i.e. examination is expedited following the TPO, but this only applies for TPO's which are not submitted anonymously.

TPO's however also have disadvantages. One disadvantage is that the observer filing the TPO will not become party to the proceedings, i.e. the observer has no right to appeal or right to be heard. Thus, the observer cannot be 100% sure that the EPO will take the TPO into account or fully understands the arguments presented therein.  It is however possible to file multiple TPO's, which allows the observer having filed a TPO to file a second TPO in response to a response from the EPO and/or from the applicant in response to the first TPO.

Another disadvantage is that if the TPO is not successful, i.e. the patent application is granted despite the arguments in the TPO, a subsequent opposition based on the same arguments and documents can possibly be negatively affected – the Opposition Division at the EPO may be more inclined to decide to revoke or limit a patent in opposition based on new arguments/documents rather than arguments/documents already discussed during examination. Furthermore, if a TPO is filed, the applicant is made aware that there is an interest in the patent which may urge the applicant to take actions (such as filing a divisional application) to improve the applicant’s position before a possible future opposition against the patent.

A further consideration to be taken into account is that the possibility for amendments after grant is more limited than during examination since the claims may not be amended in such a way as to extend the protection it confers (Art. 123(3) EPC). Thus, the applicant may have fewer options for amendments to overcome an argument/prior art document presented in an opposition or revocation action compared to in response to a TPO.

Choosing between Third Party Observations and Opposition/Revocation Action

Generally, the choice between TPO and opposition/revocation action depends on how problematic a potential competitor patent may become. If the potential patent is relevant for example from a Freedom to operate perspective, i.e. the patent could prevent future operations of the company, it may be advantageous to wait until after grant and submit an opposition or revocation action. If the patent application is identified early, such as before grant, there is sufficient time to carry out a validity search (if needed) and draft a thorough opposition. For highly relevant potential patents, the opposition/revocation action can be supplemented with a TPO objecting to only clarity of the claims (which cannot be argued in opposition anyway).

It the potential patent is less relevant but still undesired, a TPO can be a viable cost- and time-effective option to an opposition or revocation action. This is particularly the case when the TPO is filed early during examination which leaves time for further TPO's to be filed if needed.

Conclusion and further guidance

By monitoring new publications, new patent applications of competitors may be discovered at an early stage (often before grant) which increases the possibilities to intervene against the patent, possibly even before grant using third party observations.

In the foregoing, some general considerations for deciding whether to file a Third party observation or to wait until after grant to file an Opposition before the EPO and/or a Revocation action with the UPC have been discussed as general guidance. If you or anyone else has identified a European patent application that may be potentially hindering/problematic for your company’s business, one or more of these as well as other considerations may apply to your particular case. If you would want more information on Third Party Observations, EPO opposition or UPC revocation proceedings in general, or if you need advice concerning a particular European patent or patent application, please do not hesitate to contact us.