1. Background
Our client recently wrote requesting the submission of a third-party observation regarding a Chinese patent application. However, upon our confirmation, we found that the application in question had already been rejected. Given this situation, can a third-party observation still be submitted after an application has been rejected? How about the legal effect of such a submission? When is the optimal time to submit a third-party observation? And how can we provide the best advice to our client? For these purposes, the author has reviewed relevant regulations and materials online, and the findings are summarized below.
2. Timeline analysis
According to the provision of Article 54 of the Implementing Regulations of the Chinese Patent Law, "From the date of publication of an invention patent application to the date of announcement of the grant of the patent right, any person may submit observations to the patent administration department under the State Council regarding any patent application that does not comply with the provisions of the Chinese Patent Law, along with reasons for such observations".
Specified in the above provision are two critical time points:
The first is the date of publication of the invention patent application, namely, the starting date. For an invention patent application, upon passing the preliminary examination (typically 18 months from the application date), the application will be published. Subsequently, anyone may submit third-party observations. For utility model and design patents, since they are not published before being patented, there is, in theory, no procedure for accepting third-party observations. Therefore, it is inferred that similar objections can be raised through a "request for invalidation" only after the announcement of the grant of the patent right.
The second is the date of announcement of the grant of the patent right, namely, the ending date. Theoretically, submissions are always permitted before the grant of the patent right is announced.
However, this does not imply that the effectiveness of submissions remains consistent across all time points. From a practical perspective, the impact of the timeline on effectiveness can be divided into three stages:
Golden period (from the entry of an invention patent application into substantive examination to the issuance of the first Office Action):
Third-party observations submitted during this stage will be delivered to the examiner responsible for substantive examination along with the application documents. The examiner will consider these observations as references during the initial examination, and, in turn, they may directly influence the comments on novelty and inventiveness. This is the most effective period to alter the examination trajectory and prevent improper grants.
Effective period (from the issuance of the Office Action until the issuance of a rejection decision or grant decision):
The examiner will still receive observations submitted during this stage. If the observations mention compelling reference documents or arguments that the examiner has not yet discovered, the examiner may still take them into account in subsequent examinations. Particularly, if the applicant has multiple opportunities to make responses or submissions during this period, it can still work.
Marginal/Ineffective period (after the issuance of a rejection decision or grant decision):
After a rejection decision, the patent application is in a specific legal status (pending reexamination or waived). The examination procedure has concluded, and the previous examination department will no longer handle the application. Observations submitted at this point will be received and archived by the China National Intellectual Property Administration (CNIPA), but there is no legal requirement that the examiner or the collegiate panel review the observations for reexamination. The impact of the observations is negligible.
After the grant of the patent right, the patent right has been firmly established, and the third-party observation procedure is completely closed. As the sole solution to objections to the granted patent, if any, a request for invalidation may be filed with the Reexamination and Invalidation Department of the Patent Office, CNIPA.
3. Is it permitted and necessary to submit third-party observations after rejection?
The answer is: technically, submission is "possible", but in practice, it is "unnecessary" and "holds no mandatory effect".
The reasons are as follows:
A shift in legal proceedings has occurred: the issuance of a rejection decision signifies the conclusion of substantive examination procedures, and the prosecution of the application goes to the next legal stage: if the applicant waives the application, it becomes invalid; if the applicant files a request for reexamination within the prescribed timeline (within three months from the receipt of the rejection decision), the application will enter the "reexamination procedure".
The reexamination procedure is handled by the Reexamination and Invalidation Department of the Patent Office, CNIPA, functioning as a quasi-judicial process independent of the previous examination department. On this occasion, the authority to assess the patent application shifts from the original examiner to the collegiate panel for reexamination.
Deviation from the normal submission recipient: "third-party observations" submitted to the CNIPA after rejection may still be administratively filed under the original application dossier. However, since the original examiner has concluded the examination, they are not obligated to process such submissions. These observations will not automatically or formally serve as evidence or grounds in the reexamination procedure.
On the other hand, in fulfilling its duty regarding the request for reexamination, the reexamination department typically examines the legality of the rejection decision. Therefore, it is impossible to ensure that public opinions (especially newly submitted ones) will be considered.
Furthermore, in accordance with relevant provisions set forth in the Guidelines for Patent Examination, submitters of public opinions will not be notified of the processing results of these opinions (e.g., whether they are considered during the examination stage).
4. Conclusion
In summary, the author believes that third-party observations serve as a "weapon during examination" rather than a "remedial tool after rejection". The fundamental objective should be to exert influence on the examiner's decision-making process. Once the examiner makes a rejection decision, however, this weapon loses its effect under the current procedure. The games followed thereby, in the arenas of reexamination or invalidation proceedings, would need other "weapons" under different rules. Therefore, regarding the patent application mentioned above, we have advised the client to waive submitting third-party observations and instead to monitor legal developments closely. If the application is remanded to the previous examination department, observations should be submitted immediately. Alternatively, if the opportunity to submit the observations is missed after the patent right is granted, preparations should be made to initiate invalidation proceedings.
Extended suggestions:
For third parties (e.g., competitors, industry observers):
It is imperative to conduct proactive monitoring and take swift action. Once a patent application that may threaten their own interests or industrial innovation is identified, detailed, evidence-based third-party observations should be submitted at the early stage of substantive examination. This is the most cost-effective intervention, achieving the best results.
If the opportunity for early action is missed as a rejection decision is issued, focus should be laid on monitoring whether the applicant initiates reexamination proceedings. If so, the potential risks arising from the grant of the patent right should be assessed, and the materials for a request for invalidation should be prepared in advance. Upon grant, invalidation proceedings should be initiated without delay.
For patent applicants:
According to the current procedures and regulations for patent examination in China, applicants are not provided with any official or direct channels to monitor or be notified whether any third party has submitted "public opinions" on their patent applications after the applications are published and before the grant of patent rights.
On the other hand, the author opines that as applicants, there is no need at all to expend efforts checking whether public opinions have been submitted. Instead, they should always make essential responses and observations based on the examiner's formally issued office actions.
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