Author: Haoyu (Elliot) ZHOU, Siyu ZHANG

Third Party Observation (TPO) offers public a viable option to prevent patent grant, but this mechanism is often overlooked by the public perhaps due to the lack of continuous monitoring and lack of proactive freedom-to-operate searches. From time to time, entities did not realize the existence of patent applications before their grant, and thus missed the opportunity to file TPO. If someone initiates a patent invalidation proceeding against the patent as issued, that will be usually ten times more costly than a TPO.

This article provides an overview of China’s third party submission system, with the aim of helping more entities leverage this practical tool.

Timing and Eligibility for Submitting TPO

The legal basis for TPO is provided in Article 54 of the Implementing Regulations of the China Patent Law (2023), which states:

“From the date of publication of an invention patent application to the date of the grant of the patent right, any person may submit before the CNIPA observations on the application that does not conform to the provisions of the Patent Law, by stating the reasons.”

Although brief, this provision outlines several key aspects:

1.Patent Types: TPO can be used to challenge only invention patent applications, but not utility model applications or design patent applications. This is because the utility models and industrial designs are not even published before grant, leaving no opportunity for pre-grant third-party submissions.

2.Submission Window: According to the law, TPO can be submitted after patent’s publication but before its grant. In practice, however, if the examiner issues a notice of allowance, it will be too late for anyone to submit third party observation. Examiners typically consider their work have done after issuance of notice of allowance, and will not reopen examination to consider new public observations. The only option for petitioners now is to wait for patent grant and to file a request for patent invalidation.

3.Eligible Submitters: TPO can be submitted by any individuals or entities. While recent proposed Draft Patent Examination Guidelines may require patent invalidation petitioners to demonstrate a genuine interest for the invalidity request, no such requirement currently exists—or is expected—for TPO petitioners. This allows for the use of straw man for third party submission.

Optimal Timing and Format for TPOs

There is no consensus within the IP industry on the ideal time to submit a TPO before the CNIPA. Some recommend TPO be filed as early as possible after patent publication, as examination speed is unpredictable, especially for accelerated patent prosecution cases, where claims may be allowable within 3–4 months. Early submission ensures the examiner has sufficient time to review and consider the third party observation.

Others suggest waiting until issuance of first office action, on the basis that the examiner may cite prior art documents that are the same as the ones proposed in the TPO. If the examiner’s objections align with the intended TPO arguments, submission of TPO may be unnecessary.

In my view, the optimal timing depends on factors such as speed of examination and completeness of prior art. As a general rule, we recommend TPO to be submitted at the following period: after the first three months of entering the examination and before the issuance of first office action. The reason is that by this time:

l  The deadline for voluntary amendment has passed, so the claims to be examined by the CNIPA has been fixed then;

l  The examiner has not yet invested significant effort in prior art searching, making them more receptive to well-presented TPO.

It should be noted that, different from the USPTO regulation where TPO must be submitted before the issuance of first office action, TPO could be submitted at a late stage in China, even including the re-examination stage in China. However, since claim amendments made during re-examination are not available to the public, it is not advisable to submit the TPO at such a late stage. Early preparation and submission of the TPO are more recommended.

How to Increase the Impact of a TPO

Article 54 of the Chinese patent regulations doesn’t explicitly require examiners to evaluate or comment on TPO in their office actions. Therefore, TPO is commonly treated as non-binding references by CNIPA examiners in practice—unlike in some other jurisdictions (e.g., EPO), where examiners is required to review and comment on the TPO.

To increase the likelihood of TPO being considered by the CNIPA, we recommend drafting the TPO in a format similar to an office action. This reduces the examiners’ workload and facilitates direct integration of the TPO content into their next office action.

If a TPO is submitted at a late stage (e.g., submitted after the issuance of second office action), we suggest calling the examiner to notify him/her the impending TPO submission. This may encourage the examiner to hold off issuing a notice of allowance. A follow-up call after TPO submission is also advisable, as this is to ensure the TPO is received and reviewed by the examiner.

The table below summarizes key practical tips for TPO submission in China:

Should you have any questions regarding patent prosecution, invalidation, enforcement or litigation, please feel free to reach out to us at patent@foundin.cn and trademark@foundin.cn.