MPEP 1901
Protest Under 37 CFR 1.291

This is the Ninth Edition of the MPEP, Revision 08.2017, Last Revised in Januay 2018

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1901    Protest Under 37 CFR 1.291 [R-08.2012]

[Editor Note: This chapter was not substantively revised for the Ninth Edition of the MPEP. Each section has a revision indicator of "[R-08.2012]," meaning that the section as reproduced in this Edition is the version in force in August 2012 with the following exceptions: 1) As a result of the publication process, form paragraphs reproduced in this chapter reflect the text used by examiners effective November 2013 rather than those in force in August 2012; 2) The marks indicating added or deleted text from prior revisions have been removed; and 3) The notation "[Reserved]" has been added for section numbers previously missing in the hierarchy (i.e., section numbers that were never used or no longer have text). See the ninth revision of the Eighth Edition of the MPEP published August 2012 as posted on the USPTO Web site on the MPEP Archives page (http://www.uspto.gov/web/offices/ pac/mpep/old/index.htm ) for the text of form paragraphs in force in August 2012 and the prior revision marks.]

37 C.F.R. 1.291 Protests by the public against pending applications.

  • (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 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, publication, 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 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.
  • (d) A member of the public filing a protest in an application under this section will not receive any communication from the Office relating to the protest, other than the return of a self-addressed postcard which the member of the public may include with the protest in order to receive an acknowledgement by the Office that the protest has been received. The limited involvement of the member of the public filing a protest pursuant to this section 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 paragraph (c)(5) of this section.
  • (e) Where a protest raising inequitable conduct issues satisfies the provisions of this section for entry, it will be entered into the application file, generally without comment on the inequitable conduct issues raised in it.
  • (f) In the absence of a request by the Office, an applicant has no duty to, and need not, reply to a protest.
  • (g) Protests that fail to comply with paragraphs (b) or (c) of this section may not be entered, and if not entered, will be returned to the protestor, or discarded, at the option of the Office.

37 C.F.R. 1.248 Service of papers; manner of service; proof of service; proof of service in cases other than interferences.

  • (a) Service of papers must be on the attorney or agent of the party if there be such or on the party if there is no attorney or agent, and may be made in any of the following ways:
    • (1) By delivering a copy of the paper to the person served;
    • (2) By leaving a copy at the usual place of business of the person served with someone in his employment;
    • (3) When the person served has no usual place of business, by leaving a copy at the person’s residence, with some person of suitable age and discretion who resides there;
    • (4) Transmission by first class mail. When service is by mail the date of mailing will be regarded as the date of service;
    • (5) Whenever it shall be satisfactorily shown to the Director that none of the above modes of obtaining or serving the paper is practicable, service may be by notice published in the Official Gazette.
  • (b) Papers filed in the Patent and Trademark Office which are required to be served shall contain proof of service. Proof of service may appear on or be affixed to papers filed. Proof of service shall include the date and manner of service. In the case of personal service, proof of service shall also include the name of any person served, certified by the person who made service. Proof of service may be made by:
    • (1) An acknowledgement of service by or on behalf of the person served or
    • (2) A statement signed by the attorney or agent containing the information required by this section.
  • (c) See § 41.106 (e) of this title for service of papers in contested cases before the Board of Patent Appeals and Interferences.

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 mailing of a notice of allowance, 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).

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 of mailing of a notice of allowance 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.

37 CFR 1.291 (b) provides that a 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 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:

  • (A) a listing of the patents, publications, or other information relied on;
  • (B) a concise explanation of the relevance of each listed item;
  • (C) a copy of each listed patent, publication, or other item of information in written form, or at least the pertinent portions thereof;
  • (D) an English language translation of all necessary and pertinent parts of any non-English language patent, publication, or other information relied upon; 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 under 37 CFR 1.17 (i).

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. 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.