MPEP 1901.06
Examiner Treatment of Protest

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

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1901.06    Examiner Treatment of Protest [R-08.2012]

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).

I.    INITIAL REVIEW

An examiner initially receiving a protest will immediately review the same for the following:

  • (A) To ensure that either the protest or the application file indicates that a copy of the protest has been served on applicant or applicant’s attorney or agent. If a copy is not indicated as having been served on applicant or applicant’s attorney and is not filed in duplicate, then the examiner should undertake to determine whether or not service has been made by contacting applicant or applicant’s attorney or agent, but not the protestor. If it has, this should be noted on the protest or on the application file. If service has not been made, the protest and application file should be brought to the attention of the TC Director for appropriate action. See MPEP § 1901.05.
  • (B) A protest raising issues of "fraud," "inequitable conduct," or "violation of duty of disclosure" will be entered in the application file, generally without comments on those issues.

If a protest is filed in a reissue application and the reissue application is related to a patent involved in a pending interference proceeding, such application should be referred to the Office of Patent Legal Administration before considering the protest and acting on the applications.

II.    PERIOD FOR COMMENTS BY APPLICANT

If the primary examiner’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.

¶ 19.01    Period for Comments on Protest by Applicant

A protest against issuance of a patent based upon this application has been filed under 37 CFR 1.291(a) on [1], and a copy [2]. Any comments or reply applicant desires to file before consideration of the protest must be filed by [3].

Examiner Note:

1. Applicant is normally given one month to submit any comments, unless circumstances in the case would warrant a longer period.

2. A copy of this Office action is NOT sent to the protestor. See 37 CFR 1.291(d).

3. In bracket 2, insert either-- has been served on applicant-- or-- is attached hereto--.

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. The primary examiner must use care in requiring information from applicant pursuant to 37 CFR 1.291 (f) to ensure that the required information is necessary to the decision to be made.

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

¶ 19.02    Requirement for Information

The protest under 37 CFR 1.291 filed on [1] has been considered. In order to reach a full and proper consideration of the issues raised therein, it is necessary to obtain additional information from applicant regarding these issues. In particular [2]. The failure to reply to this requirement for information within TWO MONTHS of the mailing date of this requirement will result in abandonment of the application. This time period may be extended under the provisions of 37 CFR 1.136.

Examiner Note:

While the examiner normally should not need further information from applicant, this form paragraph may be used to request specific additional information from the applicant.

III.    PROTESTOR NOT PERMITTED TO COMPLETE INCOMPLETE PROTEST

A protestor may not complete an incomplete protest, nor further participate in, or inquire as to the status of, any Office proceedings relating to the initial protest. 37 CFR 1.291. The examiner must not, therefore, communicate with protestor in any way and 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. 37 CFR 1.291 (g).

IV.    TREATMENT OF TIMELY SUBMITTED PROTEST

If the protest has been timely submitted and is entered into the record of the application in time to permit review 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, and the information supplied as to same. If the protest has been timely submitted in accordance with 37 CFR 1.291 (b) but is not timely matched with the application to permit review by the examiner during prosecution, due to inadequate identification, the protest may be returned to the protestor where practical, or if return is not practical, discarded. 37 CFR 1.291 (a).

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.

It is not intended that the examiner be overly technical in construing 37 CFR 1.291( c) and refuse consideration of a protest because it does not include all of the contents enumerated by 37 CFR 1.291( c). The examiner should consider the protest to the extent it is helpful even though one or more of the listed items is omitted.

Where prior art or other documents are considered by the examiner, even though not submitted in full conformance with 37 CFR 1.291( c), the examiner must, for all those documents considered but not listed on the form PTO-892, (A) mark "checked" and place the examiner’s initials beside each citation, or (B) where all the documents cited on a given page have been considered, mark "All checked" and place the examiner’s initials in the left-hand margin beside the citations. See MPEP § 609.04(a). Where prior art or other documents are listed by the protestor on form PTO/SB/08A and 08B, even though not submitted in full conformance with 37 CFR 1.291( c), the examiner must, for all those documents considered, place the examiner’s initials adjacent to the citations in the boxes provided on the form PTO/SB/08A and 08B. Where the prior art or other documents are listed by the protestor on form PTO/SB/08A and 08B, but are not submitted in full compliance with 37 CFR 1.291( c), the examiner must, for all those documents not considered, draw a line through the citation on the form PTO/SB/08A and 08B. See MPEP § 609.05(a). If a protest entered in an application file complies with 37 CFR 1.291( c), the examiner is required to fully consider all the issues, except for any issues of "fraud," "inequitable conduct," or "duty of disclosure" raised by the protestor, and clearly state the examiner’s position thereon in detail. 37 CFR 1.291 (e).

V.    PROTEST FILED AFTER ALLOWANCE OR THE PUBLICATION OF THE APPLICATION

A.   Without the Written Consent of Applicant

If the protest is submitted after the publication of the application under 37 CFR 1.211 or the mailing of a notice of allowance under 37 CFR 1.311, whichever occurs first, and is not accompanied by the written consent of the applicant, it should not be entered in the application file. The applicant should be notified that the protest is untimely and that it is not being entered in the application file. The handling of the protest will vary depending on the particular situation as follows.

1.    Service of Copy Included

Where the protest includes an indication of service of copy on the applicant, the original protest should be discarded.

2.    Service of Copy Not Included

Where the protest does not include an indication of service, the duplicate copy of the protest (if present) should be discarded and the original protest papers should be sent to the applicant along with the notification of nonentry.

B.   With the Written Consent of Applicant

37 CFR 1.291 (b)(1) provides that a protest may be filed at any time if it is accompanied by the written consent of the applicant to the filing of the protest being submitted as it specifically excludes the timeliness requirements of 37 CFR 1.291(b). While 37 CFR 1.291 (b)(1) ensures that any (adequately identified) protest filed with the written consent of the applicant will be entered into the record of the intended application (if there is also compliance with 37 CFR 1.291 (c)), 37 CFR 1.291 (b)(1) makes clear that the protest must be matched with the intended application during prosecution to ensure consideration by the examiner. For example, where the protest is submitted close to publication of the patent, it is doubtful that the examiner would have time to review the protest, although the protest would be made of record. Even if not timely matched with the intended application, the examiner may still decide to consider the protest should there be sufficient time to do so.

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 protests after publication of patent applications, 37 CFR 1.291 (b)(1) requires that the protest after publication of an application be accompanied by the written consent of the applicant. 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 26th); 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) (other than the timeliness requirement) 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.

VI.    COPIES OF DOCUMENTS NOT SUBMITTED

If the protest is not accompanied by a copy of each prior art or other document relied on as required by 37 CFR 1.291( c), the examiner will consider the documents submitted. The protestor cannot be assured that the examiner will consider the missing document(s). However, if the examiner does so, the examiner will either cite the document on form PTO-892 or place a notation in the protest paper adjacent to the reference to the document which will include the examiner’s initials and the term "checked." If the examiner considered a document not submitted, the next Office action will so indicate.

VII.    CONSIDERATION OF PROTESTOR’S ARGUMENTS

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. While it is not necessary for the examiner to respond to each and every minute argument or point, the major arguments and points must be specifically covered. The examiner will not, under any circumstances, treat or discuss those arguments or points directed to "fraud," "inequitable conduct," or "violation of duty of disclosure." 37 CFR 1.291 (e).

VIII.    RESULTS OF CONSIDERATION REPORTED TO TECHNOLOGY CENTER (TC) DIRECTOR

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