MPEP 1901.07(a)
Filing of Multiple Papers Relating to Same Issues

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

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1901.07(a)    Filing of Multiple Papers Relating to Same Issues [R-08.2012]

Under 37 CFR 1.291( d), protestor participation ends with the filing of the initial protest, and protestor will not be allowed to complete any protest that is incomplete. Effective November 22, 2004, 37 CFR 1.291 (c) was amended to no longer permit the submission of additional (cumulative) prior art by the same real party in interest. Multiple piecemeal protests (raising a slightly different issue in each protest submission) in a single application by the same real party in interest are not permitted. After the filing of the initial protest, no further submission of prior art by the same real party in interest will be considered, except for new, non-cumulative prior art submitted under the conditions of 37 CFR 1.291 (c)(5). 37 CFR 1.291 (c)(5) requires that a second or subsequent protest by the same real party in interest include:

  • (A) an explanation as to why the issue(s) raised in the second or subsequent protest are significantly different than those raised earlier;
  • (B) an explanation as to why the significantly different issue(s) were not earlier presented; and
  • (C) the processing fee under 37 CFR 1.17 (i).

Significantly different issue(s) may be raised by the submission of new, non-cumulative prior art or other information not previously made of record. Additional comments seeking to bring in further or even new data or information with respect to an issue previously raised by the same real party in interest would not qualify as a significantly different issue. By imposing requirements for second or subsequent protests on "the same real party in interest," 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.

Second or subsequent protest by the same real party in interest that do not comply with 37 CFR 1.291 (c)(5) will not be entered in the intended application and will be returned to the protestor, or discarded, at the option of the Office. 37 CFR 1.291 (g).

An examiner will consider a second or subsequent protest filed on behalf of the same real party in interest (subject to the time frames set forth in 37 CFR 1.291 (b), the caveat that the protest can be timely matched and considered prior to the issuance of the patent, and the content requirements of 37 CFR 1.291 (c)(1) to (4)), if the second or subsequent protest complies with 37 CFR 1.291 (c)(5).