In the Chinese patent system, the public has two primary avenues for raising objections against a patent application or a patent: submitting Third-Party Observations (TPO) and filing a request for declaration of invalidation before the CNIPA. TPO can be submitted before a patent application is granted, while a request for declaration of invalidation is applicable to patents.

The advantages of submitting TPO have been widely recognized, mainly reflected in the following two aspects:

Cost Advantage

Compared to the invalidation process, submitting TPO holds a significant superiority in terms of both financial and temporal costs. The invalidation process typically requires a substantial financial investment for investigation, evidence collection, and legal procedures, and the entire process may span several years. In contrast, submitting TPO is relatively straightforward and expeditious, without the need for complex legal procedures or exorbitant costs. It allows for the timely identification and raising of issues during the early stages of patent examination.

Burden of Proof

During the patent examination process, the allocation of the burden of proof is a crucial influencing factor. In the substantive examination stage of a patent application, the burden of proof is primarily borne by the applicant. For instance, the applicant is required to demonstrate the feasibility and innovativeness of their technical solutions, and the examiner has the authority to demand further evidence or explanation from the applicant. However, in the invalidation stage, when questioning the experimental data or other issues within a patent, the burden of proof entirely falls on the petitioner for invalidation. At this juncture, the petitioner must provide credible evidence to prove that the patent has substantial defects. In certain cases, issues such as the credibility of experiments, notarization, and the like may pose obstacles to evidence presentation, thereby increasing the difficulty of the invalidation process.

It is evident that submitting TPO is a beneficial and significant means of lodging objections. Particularly for competitors in the same field, it enables the timely identification and raising of issues during the early stages of patent examination, thereby preventing competitors from obtaining unreasonable patent protection. However, in current practice, submitters of TPO (hereinafter referred to as "submitters") often focus excessively on statements regarding the lack of novelty and inventiveness, while neglecting some details. If examiners similarly overlook these details, submitters will face the reversal of the burden of proof and stricter review by the collegial panel during the invalidation stage once the patent application is granted. Therefore, based on practical experience, the following suggestions for optimizing TPO are proposed:

I. Pointing Out the Unreasonableness in Patent Applications

With the advancement of technology, artificial intelligence (AI) has been able to assist examiners in understanding technical solutions to a certain extent, but it still struggles to verify the authenticity of certain content. For example, applicants may intentionally exaggerate the performance of examples in experimental data, or provide inaccurate or misleading descriptions of technical solutions.

These data and descriptions may have a significant impact on the examination results of patent applications. For instance, for technical solutions involving simple combinations or selective inventions, if the examiner does not accept the corresponding effects and the applicant cannot provide further proof, the related technical solutions are likely to be rejected.

During the substantive examination stage, submitters can make examiners aware of the unreasonable aspects in patent applications by using various means. Submitters can either provide academic explanations of the working principles or base their arguments on existing technologies or common knowledge. For example, if the applicant claims that a certain technical feature can significantly enhance performance, but existing technologies or common knowledge indicate that such an enhancement is unreasonable, submitters can provide relevant evidence to correct the examiner's understanding of the technical solution. These opinions may help examiners gain a more comprehensive understanding of the true situation of the patent application and avoid being misled by the applicant's erroneous information.

II. Explaining the Relationship Between Features and Technical Solutions

In patent applications, applicants sometimes use special names or general expressions to describe certain features. Such expressions may pose difficulties for examiners in understanding the technical solutions. Submitters can explain the relationship between features and technical solutions in the TPO.

If it is an unconventional expression, submitters can point out its ambiguity and, if necessary, provide relevant evidence.

A typical situation also includes the limitation of parameters or performance features. Certain parameters or performance features may be difficult to compare with conventional parameters or performance in existing technologies, thereby increasing the difficulty of assessing their inventiveness.

For example, in the field of CMP Polishing Pads, applicants use a special parameter, tan delta (tanδ), to illustrate the performance of the polishing pad, which is rarely used in existing technologies. In this case, submitters should provide a detailed explanation of the mechanism of action of each component in the composition and demonstrate the connection between tanδ and conventional performance in existing technologies. This approach helps to avoid misleading examiners with special parameters or performance features and ensures that the actual relationship between the components and existing technologies serves as the basis for judgment.

Moreover, certain parameters or performance features may be closely related to specific testing conditions or application scenarios that are not commonly found in existing technologies, thereby increasing the difficulty of comparison. It is necessary to assess whether the scope of protection claimed by the applicant is reasonable and feasible.

If achieving certain performance actually needs additional complex equipment or conditions, submitters may point out that the technical solution has a defect of insufficient disclosure.

III. Providing Evidence That Examiners May Not Easily Obtain

With the development of artificial intelligence (AI) technology, similar existing technologies have become more accessible to examiners. However, examiners may still have difficulty obtaining certain evidence that is more obscure or difficult to retrieve. Submitters can focus on providing evidence that examiners may not easily obtain, such as early publications, publications with limited dissemination, and publicly available product information. These evidences may play a crucial role in the examiner's judgment.

Furthermore, when evaluating inventiveness, providing evidence for common knowledge is a challenge for examiners. Submitters can offer textbooks, industry standards, technical manuals, and other resources that are not easily found, clearly noting their sources. This can help examiners better understand and recognize common knowledge, thereby more accurately assessing the inventiveness of the patent application.

IV. Introducing Development Trajectories and Frontier Technologies

In some emerging technological fields, examiners may not be very familiar with the development trajectories and frontier technologies. Although AI can organize and introduce this information, linking it to the actual technical problems addressed by the target application requires more specialized explanations from submitters. Submitters can focus on introducing influential existing technologies, helping examiners better understand the internal connections of related technologies, and clearly explaining the motivations and hints from the viewpoint of a person skilled in the art. This enables examiners to more comprehensively assess the technical advancement and inventiveness of the patent application.

V. Verifying Invention Information

In addition to the technical solution itself, submitters can also verify invention information, such as priority and inventors. There may be some technical solutions in the application that cannot claim priority, or inventors who do not meet the requirements for confidential review. Submitters can provide relevant evidence to point out these issues and assist examiners in more accurately determining the legality of the patent application.

Common Questions Regarding the Submission of TPO

For the submission of TPO, foreign clients often raise the following questions:

(1) When is the Best Time to Submit?

TPO can be submitted at any time before a patent application is granted. It is recommended to submit TPO as early as possible, preferably before the examiner issues the first office action (OA1). This ensures that the examiner is aware of the relevant issues during the search stage, thereby more effectively influencing the examination outcome. Additionally, TPO can be submitted multiple times, and submitters can timely supplement new TPO based on the examiner's subsequent examination opinions or the newly amended claims submitted by the applicant, further refining the concerning contents or providing new evidences.

(2) Will the Examiner Consider the Public Opinion?

After submitting TPO, since examiners do not respond to TPO, submitters may worry whether the examiner will ignore the observation submitted or whether submitting too early will lead to omissions. There is no need for submitters to worry. In the patent examination process, there is a complete examination mechanism, and any intermediate documents will be considered by the examiner. However, if the observation submitted is unreasonable or not preferred, the examiner will not adopt it. Therefore, submitters need to ensure that it is reasonable and targeted, providing valuable references/prior art for the examiner.

(3) Is Communication with the Examiner Possible?

Generally, examiners will not refuse to communicate with submitters by phone, but they are not obligated to explain their specific thoughts to the submitters. Therefore, communication can be attempted, and if a good communication is established, submitters may further provide the required explanations or evidence based on the examiner's feedback. For example, if the examiner has questions about certain technical issues, submitters may provide more detailed explanations or evidences to help the examiner better understand the relevant issues.

In Summary

Submitting TPO is a beneficial means of putting forward objections. Providing clear and complete observations will be more helpful for examiners to make accurate judgments. Submitters need to consider issues from the examiner's perspective, be aware of the key points and difficulties, and even consider what the examiner might overlook. By providing more targeted and persuasive observations and evidences, it may be more effective to influence the outcome of patent examination and safeguard their own and the public's legitimate rights and interests.