37 CFR 1.291
Protests by the public against pending applications.
This document contains one section of Chapter 37 of the Code of Federal Regulations. This page was last updated in November, 2005. You may return to the main 37 CFR Index, or to the index for one of the follow parts:
part 1 (patents);
part 2 (trademarks);
part 3 (assignments);
part 10 (representation); or
part 200+ (copyrights).
(a)A protest may be filed by a member of the public against a pending application, and it will be matched with the application file if it adequately identifies the patent application. A protest submitted within the time frame of paragraph (b) of this section, which is not matched, or not matched in a timely manner to permit review by the examiner during prosecution, due to inadequate identification, may not be entered and may be returned to the protestor where practical, or, if return is not practical, discarded.
(b)The protest will be entered into the record of the application if, in addition to complying with paragraph (c) of this section, the protest has been served upon the applicant in accordance with § 1.248, or filed with the Office in duplicate in the event service is not possible; and, except for paragraph (b)(1) of this section, the protest was filed prior to the date the application was published under § 1.211, or a notice of allowance under § 1.311 was mailed, whichever occurs first.
(1)If a protest is accompanied by the written consent of the applicant, the protest will be considered if the protest is matched with the application in time to permit review during prosecution.
(2)A statement must accompany a protest that it is the first protest submitted in the application by the real party in interest who is submitting the protest; or the protest must comply with paragraph (c)(5) of this section. This section does not apply to the first protest filed in an application.
(c)In addition to compliance with paragraphs (a) and (b) of this section, a protest must include:
(1)A listing of the patents, publications, or other information relied upon;
(2)A concise explanation of the relevance of each item listed pursuant to paragraph (c)(1) of this section;
(3)A copy of each listed patent, publication, or other item of information in written form, or at least the pertinent portions thereof;
(4)An English language translation of all the necessary and pertinent parts of any non-English language patent, publication, or other item of information relied upon; and
(5)If it is a second or subsequent protest by the same real party in interest, an explanation as to why the issue(s) raised in the second or subsequent protest are significantly different than those raised earlier and why the significantly different issue(s) were not presented earlier, and a processing fee under § 1.17(i) must be submitted.