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. See MPEP § 1134.01.
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. See MPEP § 1441.01 for guidance as to the filing of a protest in a reissue application.
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 pursuant to 37 CFR 1.291(g).
37 CFR 1.291(b) provides that a timely received protest will be entered into the record of the application if, in addition to complying with the requirements of 37 CFR 1.291(c), the protest is accompanied by the statement under 37 CFR 1.291(b)(2) or it complies with 37 CFR 1.291(c)(5), and is either served upon the applicant, or is filed 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.
37 CFR 1.291(c) requires that the protest must include:
As to item (A) above, 37 CFR 1.291(c)(1)(iii) provides flexibility in permitting identification of foreign patents and published foreign patent applications by the applicant, patentee or first named inventor. Likewise, 37 CFR 1.291(c)(1)(iv) only requires identification of the author, publisher, and place of publication of a non-patent publication if that information is available. It is noted that 37 CFR 1.291(c)(1)(iv) does not preclude a protestor from providing additional information that is not specified. For example, a protestor may provide a journal title and volume/issue information for a journal article. 37 CFR 1.291(c)(1)(v) provides for the submission of information other than patents and publications, including any facts or information adverse to patentability, and requires that each item of "other information" be identified by date, if known. For example, if a publication date for a document is not known and the document is not being relied upon as a publication, the protestor may list such document as an item of other information under 37 CFR 1.291(c)(1)(v).
As to item (C) above, where only a portion of a document is listed as an item in the information list, only a copy of that portion must be submitted. It is not required to submit the entire document. In addition, when only a portion of a document is submitted, the protestor should also submit copies of pages of the document that provide identifying information. For example, if the item in the information list is identified as a certain chapter in a text book, then only a copy of that identified chapter along with copies of the pages that provide identifying information (e.g., a copy of the cover, title page, and copyright information page) should be submitted with the protest.
As to item (D) above, the required English language translation of any non-English item of information may be a reliable machine translation and need not be certified. In addition, where only a portion of a non-English language document is listed as an item in the information list, only a copy of that portion must be submitted along with an English translation of that portion.
Note that item (E) above does not apply if the protest is accompanied by a statement that it is the first protest submitted in the application by the real party in interest, or if the protest is the first protest ever to be filed in the application. 37 CFR 1.291(b)(2).
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. If there is insufficient information to identify the application, the protest may not be matched at all or not timely matched with the intended application to permit review by the examiner during prosecution of the application, in which case, the protest may not be entered and may be returned to the protestor where practical. If return is not practical, the protest will be discarded. 37 CFR 1.291(a). See MPEP § 1901.03.
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). See 37 CFR 1.291(d). The USPTO will acknowledge the receipt of a protest in an original or a reissue application file, only if a self-addressed postcard is included with the protest (see MPEP § 1901.05). The question of whether or not a patent will issue is a matter between the applicant and the Office acting on behalf of the public.
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.
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:
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.
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:
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.
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
