United States Patent and Trademark Office OG Notices: 22 April 2003
Third Party Attempts to Protest or Otherwise Oppose the Grant of
a Published Application
The American Inventors Protection Act of 1999 (AIPA) contained
a number of changes to title 35 of the United States Code. See
Pub. L. 106-113, 113 Stat. 1501, 1501A-552 through 1501A-591
(1999). These changes included provisions for the publication, with
certain exceptions, of pending patent applications (other than design
applications) eighteen months after the earliest claimed filing date
("eighteen-month publication"). See 35 U.S.C. 122(b).
The United States Patent and Trademark Office (USPTO) amended the rules
of practice in title 37 of the Code of Federal Regulations to implement
the eighteen-month publication provisions of the AIPA by a final rule
published in September of 2000. See Changes to Implement
Eighteen-Month Publication of Patent Applications, 65 FR 57023
(Sept. 20, 2000), 1239 Off. Gaz. Pat. Office 63 (Oct. 10,
2000) (final rule).
The eighteen-month publication provisions of the AIPA also
provide that the USPTO "shall establish appropriate
procedures to ensure that no protest or other form of pre-issuance
opposition to the grant of a patent on an application may be initiated
after publication of the application without the express written
consent of the applicant." See 35 U.S.C. 122(c)
(emphasis added). Third parties may submit patents or publications for
consideration in a pending published application, with no further
comment or explanation, pursuant to 37 CFR 1.99. Despite the provisions
of 35 U.S.C. 122(c), the USPTO occasionally receives third-party
inquiries or submissions (other than under 37 CFR 1.99) regarding
applications that have been published under the eighteen-month
publication provisions of 35 U.S.C. 122(b). For example, third
parties have inquired into the timing of future actions on an
application, and some third parties have insisted that the USPTO
withdraw an application from issue under 37 CFR 1.313 on the basis of
unpatentability of a claim. The USPTO considers any third-party inquiry
or submission that is not provided for in 37 CFR 1.99 in a published
application in which the applicant has not provided an
express written consent to protest or pre-issuance opposition to be
inappropriate.
The USPTO interprets the provisions of 35 U.S.C. 122(c) as
requiring, rather than simply empowering, the USPTO to ensure that no
protest or other form of pre-issuance opposition to an application may
be initiated after its publication without the express written consent
of the applicant. See 145 Cong. Rec. S14,708, S12,719 (daily
ed. Nov. 17, 1999) (35 U.S.C. 122(c) "requires the
Director to establish procedures to ensure that no protest or other
form of pre-issuance opposition to the grant of a patent on an
application may be initiated after publication of the application
without the express written consent of the applicant" (emphasis
added)).1
1While the Conference Report resulting in Pub. L.
106-113 does not contain any discussion (other than the incorporated
language) of the AIPA, a section-by-section analysis of the AIPA (among
other provisions of Pub. L. 106-113) was printed in the Congressional
Record at the request of Senator Lott.
Following enactment of 35 U.S.C. 122(c), the USPTO revised
37 CFR 1.291 and 1.292 to prohibit third parties from submitting any
protest or initiating any public use proceedings (the only forms of
third party protest or pre-issuance opposition to a pending application
permitted by the rules of practice) after publication of an
application. To balance the mandate of 35 U.S.C. 122(c) that the
USPTO establish "appropriate procedures" to ensure that third
parties may not initiate protest or other pre-issuance opposition to an
application after its publication (without the express written consent
of the applicant) and the USPTO's authority and responsibility under
35 U.S.C. 131 and 151 to issue a patent only if "it appears that
the applicant is entitled to a patent under the law," the USPTO
promulgated 37 CFR 1.99 to permit third parties to submit patents and
publications (i.e., prior art documents that are public
information and which the USPTO would discover on its own with an ideal
prior art search) during a limited period after publication of an
application. However, 37 CFR 1.99 prohibits third parties from
submitting any explanation of the patents or publications, or
submitting any other information. See Changes to Implement
Eighteen-Month Publication of Patent Applications, 65 FR at
57032-33, 57042-44, 1239 Off. Gaz. Pat. Office 71, 79-81.
Pursuant to the mandate of 35 U.S.C. 122(c) that the USPTO
establish "appropriate procedures" to ensure that third parties may
not initiate protest or other pre-issuance opposition to an application
after its publication (without the express written consent of the
applicant), the USPTO is instructing the Patent Examining Corps to: (1)
not reply to any third-party inquiry or other submission in a published
application that is still pending before the USPTO; (2) not act upon
any third-party inquiry or other submission in a published application,
except for written submissions that are provided for in 37 CFR 1.99 and
written submissions in applications in which the applicant has provided
an express written consent to protest or pre-issuance opposition; and
(3) decline to accept oral or telephoned comments or submissions about
published applications from third parties. When refusing third-party
telephone or oral discussions, examiners may call the party's
attention to the statutory prohibition on initiating protests, to this
Notice, or to 37 CFR 1.2 (all Office business should be transacted in
writing), if appropriate. The USPTO may also refer third-party
inquiries or submissions not provided for in 37 CFR 1.99 by registered
practitioners in published applications in which the applicant has
not provided an express written consent to protest or
pre-issuance opposition to the Office of Enrollment and Discipline for
appropriate action.
Finally, the provisions of 35 U.S.C. 122(c) and 37 CFR 1.99,
1.291, and 1.292 limit a third party's ability to protest, oppose the
grant of, or have information entered and considered in an application
pending before the USPTO. However, these provisions (and this notice)
do not limit the USPTO's authority to independently re-open the
prosecution of a pending application on the USPTO's own initiative and
consider information deemed relevant to the patentability of any claim
in the application. See Blacklight v. Dickinson, 295 F.3d
1269, 63 USPQ2d 1534 (Fed. Cir. 2002).
Inquiries concerning this notice may be addressed to Robert W.
Bahr at 703-305-8850.
March 26, 2003 STEPHEN G. KUNIN
Deputy Commissioner for Patent Examination Policy