Comparison of Third-Party Observation Practices in Taiwan and Mainland China

In today's keen business competition environment, could a business entity take countermeasures against those patent applications which, if approved, would adversely affect its interest? The answer is absolutely positive.  Of the various available countermeasures, filing of third-party observation is an option that can be considered. To be specific, any party may, during the prosecution of a patent application, file a third-party observation to assist the examiner to examine, by reviewing the brief of the third-party observation and evidence, the novelty or inventive step of the claimed invention, so that the applicant could possibly be forced to narrow down the scope of the claims or to even forestall the application from maturing into a patent. Coupled with the fact that the cost of filing a third-party observation is usually much cheaper than filing an invalidation action after a patent application matures into a patent, it is particularly worthy of understanding the procedure of a third-party observation.

Given that Taiwan and Mainland China are competitive in edge-cutting technologies and that Mainland China is a huge consumer market, many applicants would choose to file patent applications on both sides of the strait at the same time. Therefore, the writer would like to make a comparison between the two cross-strait sides regarding the procedure of a third-party observation.

One other matter which merits mentioning is that, while filing of a third-party observation in an anonymous manner exists in practice in either Taiwan or Mainland China, any third party can determine whether to reveal his identity on the basis of actual circumstances. For example, if the purpose of filing of a third-party observation is to prevent a competitor's invention patent application from approval or to induce the applicant to narrow down the scope of the claims, disclosing his identify or not would be of no consequence. However, in the face of other circumstances, such as when one's invention is maliciously copied by others and an invention patent application has been filed for such invention, filing an anonymous third-party observation against an invention patent application suspected of plagiarism may not be an ideal option.

The above contents are intended as general discussion of the subject matter only and shall not be deemed as legal advice to any particular case or issue.