1901 Protest Under 37 C.F.R. 1.291

  Section Frequency Chart

The degree of participation allowed a protestor is solely within the discretion of the Director of the USPTO.

37 CFR 1.291 gives recognition to the value of written protests in bringing information to the attention of the Office and in avoiding the issuance of invalid patents.

• With the exception of a protest accompanied by a written consent of the applicant, all protests must be submitted prior to the publication of the application or the date a notice of allowance is given or mailed, whichever occurs first.
• No protest or "other form of preissuance opposition to the grant of a patent" may be initiated after publication of the application without the applicant’s express written consent as specified by 35 U.S.C. 122(c).
• Even if applicant’s express written consent is given, the protest must be filed prior to the date a notice of allowance is given or mailed.
• Third parties wishing to submit information in the form of patents and printed publications after publication of the application might consider whether a third-party submission under 35 U.S.C. 122(e) would be appropriate.

It is noted that a protest filed in a reissue application is not a "form of preissuance opposition to the grant of a patent" since 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 constraints of the examination.
• A protest with regard to a reissue application should, however, be filed within the 2-month period following the announcement of the filing of the reissue application in the Official Gazette.

A protest may not be filed in a provisional application because provisional applications are not examined.

• A protest filed in a provisional application will not be entered and will be discarded.

37 CFR 1.291(c) requires that the protest must include:

• (A) An information list of the documents, portions of documents, or other information being submitted, where each:
  • (1) U.S. patent is identified by patent number, first named inventor, and issue date;
  • (2) U.S. patent application publication is identified by patent application publication number, first named inventor, and publication date;
  • (3) Foreign patent or published foreign patent application is identified by the country or patent office that issued the patent or published the application; an appropriate document number; the applicant, patentee, or first named inventor; and the publication date indicated on the patent or published application;
  • (4) Non-patent publication is identified by author (if any), title, pages being submitted, publication date, and, where available, publisher and place of publication; and
  • (5) Item of other information is identified by date, if known.
• (B) A concise explanation of the relevance of each item identified in the information list;
• (C) A legible copy of each item identified in the information list, other than U.S. patents and U.S. patent application publications;
• (D) An English language translation of any non-English language item identified in the information list; and
• (E) If the protest is a second or subsequent protest by the same real party in interest, the protest must further include:
  • (1) an explanation as to why the issue(s) being raised in the second or subsequent protest are significantly different than those raised earlier;
  • (2) an explanation as to why the significantly different issue(s) were not presented to the Office earlier; and
  • (3) the processing fee..

A party obtaining knowledge of an application pending in the Office may file a protest against the application and may therein call attention to any facts within protestor’s knowledge which, in the protestor’s opinion, would make the grant of a patent on the application improper.

• The party should include with the protest whatever information the party is aware of that would facilitate identification of the application and matching the protest with the application.
• Where the protest specifically identifies the application, and is otherwise compliant, the protest will be considered by the Office if it is matched with the application in time to permit review by the examiner during prosecution.

A protestor does not, by the mere filing of a protest, obtain the "right" to argue the protest before the Office.

• Active participation by a protestor ends with the filing of the protest, and no further submission on behalf of the protestor will be considered, unless the submission is made pursuant to 37 CFR 1.291(c)(5).

1901.05 Acknowledgment of Protest

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. 

• 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.

The Office will communicate with the applicant regarding any protest entered in an application file and may require the applicant to supply information, including replies to specific questions raised by the protest, in order for the Office to decide any issues raised thereby.

1901.06 Office Treatment of Protest

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. 

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 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.

II. PERIOD FOR COMMENTS BY APPLICANT

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.

III. EXAMINER MUST NOT COMMUNICATE WITH PROTESTOR

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.

• In addition, the examiner will not consider a later submission by protestor, unless such submission complies with 37 CFR 1.291(c)(5).
• Improper protests will be returned to the protestor, or discarded, at the option of the Office.

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.

V. PROTEST FILED ON OR AFTER PUBLICATION OF THE APPLICATIONA.Without the Written Consent of Applicant

If a protest is submitted on or after the date the application is published 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 is given or mailed.

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.

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

1901.07 Protestor Participation

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.

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