File a third party observation at the European Patent Office
There is a possibility under the European Patent Convention for third parties to submit arguments to the EPO examiner relating to the lack of patentability of an invention. This is called a Third Party Observation under A. 115 EPC.
The EPO examiner is legally obliged to consider the third party observation before grant of a patent and to forward it to the applicant.
A third party observation can concern any aspect of patentability, such as the traditional requirements of novelty and inventive step, but also clarity of the claims and whether the were disclosed in the patent application as orginally filed.
EPO third party observations are sometimes called a ‘poor man’s opposition’. The costs will usually indeed be significantly lower than the costs of an oppostion, but they are also, in some respects, less good.
But then again, if budget is too tight for a real opposition, in many cases third party observations may achieve the desired goal that a patent is not granted.
The European Patent Office stimulates the filing of third party observations, as they consider that these will improve the quality of the examination. Interestingly, they may be filed completely anonymously.
Differences between a third party observation and an opposition
A major difference to be kept in mind is that third party observations are only possible before grant of a patent, whereas opposition is only possible after grant of the patent.
Further, there is a difference in arguments that may be used in both procedures. Clarity issues are for instance excluded from opposition procedures. It is therefore advisable to present them to the EPO by means of a third party observation. On the other hand, an argument based lack of novelty or inventive step based on weakly documented prior public use will rarely be successful in a third party observation at EPO, because the normal examination is not really set up to evaluate evidence. Therefore, this is better presented in a real opposition.
Issues relating to lack of dislosure of the claimed invention in the application as filed are usually much better presented during opposition. The reason is that these issues may often be fixed by the applicant during normal examination, but can easily by fatal during opposition. For this kind kind of objection a third party observation should not be used as it may do more harm than good.
An important difference is also that the person submitting third party observations does not become party to the proceedings. He will not be informed of the outcome and the acceptance of arguments filed in the third party observation is fully at the discretion of the examiner, without even an explanation being needed (and usually also not being given).
EPO third party observations are not an instrument to be used lightly, but can be very useful, depending on the circumstances.