The involvement of the public in patent examination is used in some forms to help identifying relevant prior art and, more generally, to help assessing whether patent applications and inventions meet the requirements of patent law, such as novelty, inventive step or non-obviousness, and sufficiency of disclosure.
Rationale
The rationale for public participation in patent-application reviews is that knowledgeable persons in fields that are relevant to a particular patent application will provide useful information to patent examiners if the proper forum is provided. One model for such a forum is a wiki model where the public may submit the prior art and commentary that are relevant to a given patent application, and patent examiners can consult that forum. The intended effect is that patent examination will be more efficient and thorough so that the patents that are issued will be of a higher quality than is currently possible.
History
In the 17th and 18th centuries, patent examination in France for novelty and utility was performed by the private French Academy under commission from the French government. The Academy sought the input of outside experts in the specific fields of the inventions. Galileo, for example, was consulted when a patent was applied for regarding a new method of determining longitude according to the position of the moon. Galileo's conclusion is that the method would work in principle, but the measuring techniques are not accurate enough to provide meaningful results; therefore, the patent was denied.
Legal constraints
United States
In the United States, the third parties may not provide commentary or opinions directly to a patent examiner during the prosecution of a patent unless the patent applicant gives the examiner written permission to do so. Rule 99, which previously allowed a member of the public to submit prior art to an examiner within two months of an application publication, has been repealed by the AIA. Rules 290 (37 CFR 1.290) and 35 USC 122(e) control the submission of prior-art references by third parties after the publication of an application and before the issuance of the patent. The cited prior-art references must be dated at least six months from the date of the publication, the first rejection of any claim, or the notice of allowance.
History
Observations by third parties
The European Patent Convention (EPC) provides for that any person may submit observations concerning the patentability of an invention described in a European patent application. This is a form of public participation to patent examination. Filing observations by third parties at the European Patent Office (EPO) is free of charge, but the observations must include a statement of grounds. The statement of grounds must be in English, French or German. The person filing the observations does not become party to the proceedings.
In the United States Patent and Trademark Office (USPTO), third parties may submit prior art relevant to a published patent application within two months of said publication or before a notice of allowance is given, whichever comes first. In contrast to European practice, however, third parties are not allowed to provide any additional explanation of the relevance of the prior art. The USPTO requires a fee.
In Australia, any person can file observations (by reference to prior art) in regard to the novelty or inventive step (i.e. non-obviousness) of a pending patent application. Those observations can be filed at any time between the complete specification being published (i.e. becoming open for public inspection) and three months after the advertisement of acceptance of the patent (which is a precursor to the patent being granted). This gives the public at large an opportunity to draw to the examiner’s attention to prior art references that he or she might not have considered during examination.
In July 2012, a third party observation system was also introduced for Patent Cooperation Treaty (PCT) applications. The observations have to relate to novelty and inventive step, and they may be submitted anonymously. The observations can be made at any time from the publication of the PCT application until the expiration of 28 months from the priority date. No fee is due for filing the observations.