1901.01 Who Can Protest [R-10.2019]

Any member of the public, including private persons, corporate entities, and government agencies, may file a protest under 37 CFR 1.291. A protest may be filed by an attorney or other representative on behalf of an unnamed real party in interest. 37 CFR 1.291 does not require that the real party in interest be identified. In accordance with 37 CFR 1.291(b)(2), a statement must accompany the protest that it is the first protest submitted in the application by the real party in interest who is submitting the protest. Where a protest is not the first protest by the real party in interest, 37 CFR 1.291(b)(2) requires compliance with 37 CFR 1.291(c)(5). The requirements of 37 CFR 1.291(c)(5) cannot be avoided by multiple protests submitted by different people representing the same real party in interest. 37 CFR 1.291(b)(2) does not apply to the first protest in an application. A protestor may not know if a protest has already been filed (by another), and may have no way of checking (e.g., a non-reissue application for which the file wrapper is not publicly available). Should the protest (inadvertently or otherwise) fail to include the statement that the protest is the first protest by the real party in interest filing the current protest and fail to comply with 37 CFR 1.291(c)(5), if, in fact, the protest is the first filed protest in an application, it will be considered where all other conditions are met.

1901.02 Information Which Can Be Relied on in Protest [R-10.2019]

Any information which, in the protestor’s opinion, would make the grant of a patent improper can be relied on in a protest under 37 CFR 1.291. While prior art documents, such as patents and publications, are most often the types of information relied on in protests, 37 CFR 1.291 is not limited to prior art documents. Protests may be based on any facts or information adverse to patentability. The content and substance of the protest are more important than whether prior art documents, or some other form of evidence adverse to patentability, are being relied on. The Office recognizes that when evidence other than prior art documents is relied on, problems may arise as to authentication and the probative value to assign to such evidence. However, the fact that such problems may arise, and have to be resolved, does not preclude the Office from considering such evidence, nor does it mean that such evidence cannot be relied on in a protest under 37 CFR 1.291. Information in a protest should be set forth in the manner required by 37 CFR 1.291(c).

The following are examples of the kinds of information, in addition to prior art documents, which can be relied on in a protest under 37 CFR 1.291:

• (A) Information demonstrating that the invention was publicly known or used by others and is barred from patenting under 35 U.S.C. 102(a)(1) and/or 103 or pre-AIA 35 U.S.C. 102(a) and/or 103.
• (B) Information that the invention was in public use or on sale and is barred from patenting under 35 U.S.C. 102(a)(1) or pre-AIA 35 U.S.C. 102(b).
• (C) Information that the inventor “has abandoned the invention” (pre-AIA 35 U.S.C. 102(c)) or “did not himself invent the subject matter sought to be patented” (35 U.S.C. 101 and/or pre-AIA 35 U.S.C. 102(f)).
• (D) Information relating to inventorship under pre-AIA 35 U.S.C. 102(g).
• (E) Information relating to compliance with 35 U.S.C. 112.
• (F) Any other information demonstrating that the application lacks compliance with the statutory requirements for patentability.
• (G) Information indicating “fraud” or “violation of the duty of disclosure” under 37 CFR 1.56 may be the subject of a protest under 37 CFR 1.291. Protests raising fraud or other inequitable conduct issues will be entered in the application file, generally without comment on those issues. 37 CFR 1.291(e). See MPEP § 2013.

Different forms of evidence may accompany, or be submitted as a part of, a protest under 37 CFR 1.291. Conventional prior art documents such as patents and publications are the most common form of evidence. However, other forms of evidence can likewise be submitted. Some representative examples of other forms of evidence are litigation-related materials such as complaints, answers, depositions, answers to interrogatories, exhibits, transcripts of hearings or trials, court orders and opinions, stipulations of the parties, etc. Where only a portion of the litigation-related materials is relevant to the protest, protestors are encouraged to submit only the relevant portion(s).

In a protest based on an alleged public use or sale, evidence of such public use or sale may be submitted along with affidavits or declarations identifying the source(s) of the evidence and explaining its relevance and meaning. Such evidence might include documents containing offers for sale, orders, invoices, receipts, delivery schedules, etc. The Office will make a decision as to whether or not public use or sale has been established based on the evidence the Office has available.

While the forms in which evidence and/or information may be submitted with, or as a part of, a protest under 37 CFR 1.291, are not limited, protestors must recognize that such submissions may encounter problems such as establishing authenticity and/or the probative value to apply to the evidence. Obviously, the Office will have to evaluate each item of evidence and/or information submitted with a view as to both its authenticity and what weight to give thereto.

Information which is subject to a court-imposed protective or secrecy order may be submitted with, or as a part of, a protest under 37 CFR 1.291. Trade secret information which was obtained by a protestor through agreements with others can likewise be submitted. Such information, if submitted in accordance with MPEP § 724, will be treated as set forth therein and will be made public if a reasonable examiner would consider the information important in deciding whether to allow the application to issue as a patent. To ensure that the Office recognizes the protected/secret material, the protestor should follow the procedures in MPEP § 724.

1901.03 How Protest Is Submitted [R-10.2019]

A protest under 37 CFR 1.291 must be submitted in writing, must specifically identify the application to which the protest is directed by application number or serial number and filing date, and must include an information list of all documents, portions of documents, or other information submitted; a concise explanation of the relevance of each listed item; an English language translation of any non-English language document or other information identified in the information list; and be accompanied by a copy of each item in the information list except for U.S. patents and U.S. patent application publications. Protestors are encouraged to use form PTO/SB/08A and 08B “Information Disclosure Statement By Applicant” (or an equivalent form) when preparing a protest under 37 CFR 1.291, especially the information list under 37 CFR 1.291(c)(1). See MPEP § 609.04(a). In addition, the protest and any accompanying papers must either (1) reflect that a copy of the same has been served upon the applicant or upon the applicant’s attorney or agent of record; or (2) be filed with the Office in duplicate in the event service is not possible. In the event a duplicate protest is enclosed for the applicant, the protest should be accompanied by an explanation of why service on applicant could not be made.

Each protest should be clearly identified as a “PROTEST UNDER 37 CFR 1.291.” It is also important that any protest against a pending application specifically identify the application to which the protest is directed with the identification being as complete as possible. If possible, the following information should be placed on the first page of the protest:

• (A) Name of inventor(s)
• (B) Name of applicant(s).
• (C) Application number.
• (D) Filing date of application.
• (E) Title of invention.
• (F) Art unit number (if known).
• (G) Name of examiner to whom the application is assigned (if known).

In addition to the above information, if the protest includes exhibits or other attachments, these should also contain identifying information thereon in order to prevent them from becoming inadvertently separated and lost.

Any protest can be submitted by mail to Mail Stop Petition, Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450. A protest must NOT be submitted electronically via EFS-Web.

If the protestor is unable to specifically identify the application to which the protest is directed by application number, but, nevertheless, believes such an application to be pending, the protest should be directed to the attention of the Office of Petitions (using Mail Stop Petition), along with as much identifying data for the application as possible. Protests which do not adequately identify a pending patent application will be returned to the protestor or discarded, and will not be further considered by the Office.

Where a protest is directed to a reissue application for a patent which is involved in litigation, the outside envelope and the top right-hand portion of the protest should be conspicuously marked with the words “REISSUE LITIGATION.” Any “REISSUE LITIGATION” protest mailed to the Office should be so marked and mailed to Mail Stop Petition, Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450.

A protest must be complete and contain a copy of every document relied on by the protestor, whether the document is a prior art document, court litigation material, affidavit, or declaration, etc. A protest not accompanied by a copy of each document relied on (except for U.S. patents and U.S. patent application publications) will not be entered. A protestor will not be given an opportunity to supplement or complete any protest which is incomplete.

Active participation by protestor ends with the filing of the protest, as provided in 37 CFR 1.291(d), and no further submission on behalf of protestor will be acknowledged or considered, unless the submission is made pursuant to 37 CFR 1.291(c)(5). 37 CFR 1.291(c)(5) requires that any further submission by the same party in interest must be directed to significantly different issue(s) than those raised in the earlier protest. 37 CFR 1.291(c)(5) requires (A) an explanation as to how the issue(s) raised are significantly different, (B) why the different issue(s) were not presented in the earlier protest, and (C) the processing fee under 37 CFR 1.17(i). Submissions which will not be entered in the application file include further submissions in violation of 37 CFR 1.291 by which protestor merely seeks to participate in the examination process. For example, mere arguments relating to an Office action or an applicant’s reply would not qualify as a new protest. Likewise, additional comments seeking to bring in further or even new data or information with respect to an issue previously raised by protestor would not qualify as a new protest. The Office will not add these arguments or comments to the original protest and will not enter them in the application file.

Even new protests which also argue Office actions or replies or any matter beyond the new issue should not be accepted. Improper protests will be returned to the protestor, or discarded, at the option of the Office. 37 CFR 1.291(g). While improper protests will be returned or discarded, a new protest by an earlier protestor will be proper and can be entered if it complies with 37 CFR 1.291(c)(5).

Every effort should be made by a protestor to serve a copy of the protest upon the attorney or agent of record or upon the applicant if no attorney or agent is of record. Of course, the copy served upon applicant or upon applicant’s attorney or agent should be a complete copy including a copy of each prior art or other document relied on in the same manner as required by 37 CFR 1.291(c)(3) for the Office copy. The protest filed in the Office should reflect, by an appropriate “Certificate of Service,” that service has been made as provided in 37 CFR 1.291(b). Only in those instances where service is not possible should the protest be filed in duplicate in order that the Office can attempt service. In the event a duplicate protest is enclosed for the applicant, the protest should be accompanied by an explanation of why service on applicant could not be made.

If the protest filed in the Office does not, however, indicate service on applicant or applicant’s attorney or agent, and is not filed in duplicate, then the protest will not be entered. If the protest is filed in duplicate and otherwise compliant, the Office will forward the protest to the correspondence address of record, and the application file should reflect that fact, either by a letter transmitting the protest or, if no transmittal letter is used, simply by an appropriate notation in the application file history.

1901.04 When Can the Protest Be Submitted [R-10.2019]

Pursuant to 37 CFR 1.291(b), a protest is timely if (1) filed prior to the date the application was published under 37 CFR 1.211 or the date a notice of allowance under 37 CFR 1.311 was given or mailed, whichever occurs first, or (2) accompanied by written consent of the applicant and filed prior to the date a notice of allowance under 37 CFR 1.311 was given or mailed in the application. Publication under the Patent Cooperation Treaty (PCT) by the World Intellectual Property Organization (WIPO) of an international application would not trigger the end of the 37 CFR 1.291(b) time period for submitting a protest in a national stage application under 35 U.S.C. 371. Likewise, publication under the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs by WIPO of an international registration would not trigger the end of the 37 CFR 1.291(b) time period for submitting a protest in a nonprovisional international design application.

As a practical matter, any protest should be submitted as soon as possible after the protestor becomes aware of the existence of the application to which the protest is to be directed. By submitting a protest early in the examination process, i.e., before the Office acts on the application if possible, the protestor ensures that the protest will be of the most benefit to the Office in its examination of the application. A protest submitted on or after the date a notice of allowance under 37 CFR 1.311 was given or mailed will not be entered and will be discarded pursuant to 37 CFR 1.291(g).

A protest filed after final rejection (and prior to the date the notice of allowance is given or mailed) and complying with all the requirements of 37 CFR 1.291 will be considered if the application is still pending. However, prosecution will not ordinarily be reopened after final rejection if the prior art cited in the protest is merely cumulative of the prior art cited in the final rejection.

A protest filed in a reissue application is not a "form of preissuance opposition to the grant of a patent" because the patent to be reissued has already been granted. Thus, a protest may be filed in a reissue application throughout the pendency of the reissue application prior to the date a notice of allowance is given or mailed subject to the timing constraint of the examination. A protest with regard to a reissue application should, however, be filed within the 2-month period following announcement of the filing of the reissue application in the Official Gazette. See MPEP § 1441.01. If, for some reason, the protest of the reissue application cannot be filed within the 2-month period provided by MPEP § 1441, the protest can be submitted at a later time, but the protestor must be aware that reissue applications are “special” and a later filed protest may be received after action by the examiner. Any request by a protestor in a reissue application for an extension of the 2-month period following the announcement in the Official Gazette , and a delay of the examination until the extended period expires, will be considered only if filed in the form of a petition under 37 CFR 1.182 and accompanied by the petition fee set forth in 37 CFR 1.17(f). The petition under 37 CFR 1.182 and the petition fee must be filed prior to the expiration of the 2-month period provided by MPEP § 1441. The petition must explain why the additional time is necessary and the nature of the protest intended. A copy of such petition must be served upon applicant in accordance with 37 CFR 1.248. The petition should be directed to the appropriate Technology Center (TC) which will forward the petition to the Office of Patent Legal Administration for decision. Any such petition will be critically reviewed as to demonstrate need before being granted since the delay of examination of a reissue application of another party is being requested. Accordingly, the requests should be made only where necessary, for the minimum period required, and with a justification establishing the necessity for the extension.

Where a protest of a reissue application is submitted after the 2-month period, no petition for entry of the protest under 37 CFR 1.182 is needed with respect to the protest being submitted after the 2 months, unless a final rejection has been issued or prosecution on the merits has been closed for the reissue application. See MPEP § 1441.01. In situations where a final rejection has been issued, or prosecution on the merits has been otherwise closed, a petition under 37 CFR 1.182 along with the petition fee under 37 CFR 1.17(f) must be submitted with the protest. The petition must include an explanation as to why the additional time was necessary and identify the nature of the protest submitted. A copy of the petition must be served upon the applicant in accordance with 37 CFR 1.248. The petition should be directed to the Office of Petitions.

If the protest is a “REISSUE LITIGATION” protest, it is particularly important that it be filed early if protestor wishes it considered at the time the Office first acts on the application. Protestors should be aware that the Office will entertain petitions from reissue applicants under 37 CFR 1.182 to waive the 2-month delay period of MPEP § 1441 in appropriate circumstances. Accordingly, protestors to reissue applications cannot automatically assume that the full 2-month delay period of MPEP § 1441 will always be available.

1901.05 Acknowledgment of Protest [R-10.2019]

A protestor in an original or reissue application will not receive any communications from the Office relating to the protest, or to the application, other than the return of a self-addressed postcard which protestor may include with the protest in order to receive an acknowledgment that the protest has been received by the Office. 37 CFR 1.291(d). Where a self-addressed postcard is included with the protest, the Office will acknowledge receipt of the protest by return of the self-addressed postcard. Thus, it is to be noted that the receipt of the self-addressed postcard from the Office is not an indication that the protest complies with 37 CFR 1.291.

The postcard acknowledging receipt of a protest in other than a reissue application will not and must not indicate whether such application in fact exists or the status of any such application. Office employees must exercise care to ensure that matters relating to applications are not discussed with protestor or communicated in writing to protestor. See MPEP § 1134. Original applications are, of course, required by 35 U.S.C. 122 to be kept in confidence unless published pursuant to 35 U.S.C. 122(b) or are available to the public pursuant to 37 CFR 1.14(a)(1)(iv), (v), or (vi). Thus, unless a protestor has been granted access to an original application, the protestor is not entitled to obtain from the Office any information concerning the same, including the mere fact that such an application exists. Petitions for access to patent applications with the exception of applications involved in or related to a proceeding before the Patent Trial and Appeal Board are decided by the Office of Petitions pursuant to delegation contained in MPEP § 1002.02(b). Reissue applications filed on, or after, March 1, 1977 are pursuant to 37 CFR 1.11(b) “open to inspection by the public.” After an application is published pursuant to 35 U.S.C. 122(b), the application file contents become available to the public through the Office’s public application image file wrapper via the Office's website. In addition, a copy of the file content of the published application may be requested by filing a written request under 37 CFR 1.14(a)(1)(i) including the fee as set forth in 37 CFR 1.19(b).

The Office will communicate with the applicant regarding any protest entered in an application file and may require the applicant to supply information pursuant to 37 CFR 1.291(f), including replies to specific questions raised by the protest, in order for the Office to decide any issues raised thereby. Under 37 CFR 1.291(f), the examiner can require the applicant to reply to the protest and answer specific questions raised by the protest. See MPEP § 1901.06, subsection II.

1901.06 Office Treatment of Protest [R-10.2019]

Office practice as defined in 37 CFR 1.291(a) gives recognition to the value of the written protests in avoiding the issuance of invalid patents. However, the fact that one or more protests has been filed in an application, whether the application is an original application or a reissue application, does not relieve the examiner from conducting a normal examination on the merits, including the required search. Evidence submitted in a protest will be considered on the same basis as other ex parte evidence. In re Reuter, 651 F.2d 751, 758, 210 USPQ 249, 255 (CCPA 1981).

Protests will not be automatically made of record in an application. The Office has designated points of contact and established procedures for reviewing protests to determine if they are compliant with the relevant provisions of 37 CFR 1.291 before being made of record in an application. These procedures permit compliant protests to be entered into the record of the application and made available to the examiner for consideration as early as possible.

If a compliant protest is filed in a reissue application and the reissue application is related to a patent involved in a pending interference or derivation proceeding, such application should be referred to the Office of Patent Legal Administration before the examiner considers the protest and acts on the application.

37 CFR 1.291(g) provides that a protest that fails to comply with 37 CFR 1.291(b) or (c) may not be entered. A protest that is non-compliant with some requirement of 37 CFR 1.291(b) or (c), may be entered into the record if the reviewer determines that the error is of such a minor character that, in the opinion of the Office, it does not raise an ambiguity as to the content of the protest. For example, if an error with respect to a requirement of 37 CFR 1.291(c) is of such a nature that the content of the protest can still be readily ascertained (e.g., a U.S. patent is identified by the correct patent number and issue date but the name of the first named inventor is clearly misspelled), the Office may have enough information to be able to enter the protest into the record despite the error. However, the determination of whether to enter or not to enter a protest that partially complies with a requirement of 37 CFR 1.291(b) or (c) will be made on a case-by-case basis and at the sole discretion of the Office (e.g., the Office may decline to enter a protest listing a U.S. patent whose patent number does not match Office records with respect to that patent number’s issue date and/or first named inventor). In any event, the Office will either enter or not enter the entire protest and will not attempt to enter portions of partially compliant protests, except as noted in the paragraph below.

In the unlikely event an examiner believes a protest is non-compliant, the examiner should immediately consult the reviewer of the protest or other appropriate Technology Center point of contact. If as a result of such consultation it is determined that the examiner should not consider a listed document, the examiner should strike through the document to indicate that the examiner did not consider either the document or its accompanying concise explanation. In some instances, the stricken document may be cited by the examiner on a form PTO-892.

If the Office’s initial review reveals that the protest is ready for consideration during the examination, the examiner may nevertheless consider it desirable, or necessary, to obtain applicant’s comments on the protest before further action. In such situations, the examiner will offer applicant an opportunity to file comments within a set period, usually 1 month, unless circumstances warrant a longer period.

Form paragraph 19.01 can be used to offer applicant an opportunity to file comments on the protest.

Where necessary or desirable to decide questions raised by the protest, under 37 CFR 1.291(f) the primary examiner can require the applicant to reply to the protest and answer specific questions raised by the protest. The primary examiner cannot require a reply to questions relating to “fraud,” “inequitable conduct,” or “violation of the duty of disclosure” since those issues are generally not commented on by the Office. Any questions directed to applicant by the primary examiner must be limited to seeking answers reasonably necessary in order for the primary examiner to decide questions raised by the protest and which are before the primary examiner for decision. The primary examiner is not permitted, under 37 CFR 1.291(f), to seek answers to questions which are not before the primary examiner for decision.

Form paragraph 19.02 can be used to require additional information from applicant regarding issues raised by the protest.

The examiner must not communicate with protestor in any way even if the protest is incomplete or the protestor inquires as to the status of any Office proceedings related to the protest. See 37 CFR 1.291. In addition, the examiner will not consider a later submission by protestor, unless such submission complies with 37 CFR 1.291(c)(5) (see MPEP § 1901.07). Improper protests will be returned to the protestor, or discarded, at the option of the Office. See 37 CFR 1.291(g).

If the protest has been reviewed and entered into the record of the application in time to permit consideration by the examiner during prosecution, the examiner must consider (A) each of the prior art or other documents submitted in conformance with 37 CFR 1.291(c) and any discussion of such documents in the protest, and (B) any non-prior art issue(s) raised by the protest that are appropriate for consideration by the primary examiner, and the information supplied as to the same.

At least those prior art documents which the examiner relies on in rejecting claims will be made of record by means of form PTO-892, unless the protestor has listed such prior art or other documents on form PTO/SB/08A and 08B (or an acceptable substitute as provided by MPEP § 609.04(a)), in which case the examiner will place the examiner’s initials adjacent to the citations in the boxes provided on the form PTO/SB/08A and 08B (see MPEP § 609.04(a)). Where the prior art or other documents have not been cited on a PTO-892, or listed and initialed on a PTO/SB/08A and 08B, the examiner will place a notation in the protest paper adjacent to the reference to the documents. The notation should include the examiner’s initials and the term “checked.” The examiner will also indicate in the next Office action that all documents submitted have been considered.

If a protest is submitted on or after the date the application is published under 37 CFR 1.211 and is not accompanied by the written consent of the applicant, it will not be entered in the application file.

35 U.S.C. 122(c) permits the filing of a protest in an application after the application has been published if there is express written consent of the applicant. In order to file a protest after publication of a patent application, 37 CFR 1.291(b)(1) requires that the protest be accompanied by the written consent of the applicant and be filed prior to the date the notice of allowance under 37 CFR 1.311 is given or mailed. The written consent should indicate that applicant is consenting to the specific protest being submitted. Applicant may choose to provide a blanket consent to: any protests filed; protests filed by a particular real party in interest; a single protest by a particular party in interest (e.g., a protest that party Smith has informed me that he will be submitting during the week of November 26^th); a protest involving a particular item of prior art; or a particular protest that has been reviewed and applicant is willing to have considered by the Office. Where applicant consents to a protest, the Office will abide by the terms of the consent, and will enter the protest only if (A) the protest submitted is within the scope of the consent, and (B) the protest complies with the requirements of 37 CFR 1.291(b) and (c). If a properly consented to protest does not comply with some of the requirements of 37 CFR 1.291(b) or (c), the Office may choose to consider a piece of prior art permitted under the terms of the consent.

In view of the value of written protests, the examiner must give careful consideration to the points and arguments made on behalf of the protestor. Any Office action by the examiner treating the merits of a timely submitted protest complying with 37 CFR 1.291(c) must specifically consider and make evident by detailed reasoning the examiner’s position as to the major arguments and points raised by the protestor, except for issues related to inequitable conduct. The examiner will not, under any circumstances, treat or discuss those arguments or points directed to “fraud,” “violation of duty of disclosure,” or other inequitable conduct issues. See 37 CFR 1.291(e). While it is not necessary for the examiner to respond to each and every minute argument or point, the major arguments and points, except those concerning inequitable conduct, must be specifically covered.

After the examiner has considered the protest, the examiner will report the results of such consideration to the TC Director.

1901.07 Protestor Participation [R-10.2019]

37 CFR 1.291 does not permit protestor, or any other member of the public, to contact or receive information from the Office as to the disposition or status of the protest, or the application to which it is directed, or to participate in any Office proceedings relating to the protest. The Office does not serve copies of Office actions or other documents mailed by the Office on protestors, and does not require applicants to serve copies of papers filed with the Office on protestors. Furthermore, a protestor is not permitted to participate in interviews, appeal a decision by the examiner adverse to the protestor to the Patent Trial and Appeal Board, or participate in an appeal by applicant. The disposition of the protest will be an ex parte matter between the Office and the applicant. Where protestor has access to an application, for example, a reissue application which is open to the public and may be inspected under 37 CFR 1.11, the proceedings may thereby be monitored.