M.P.E.P. 1900 Protest

Question 1

Who can file a protest?

Answer 1

Any member of the public, including private persons, corporate entities, and government agencies.

A protest may be filed by an attorney or other representative on behalf of an unnamed real party in interest.

Question 2

A protest specifically identifying an application will be entered in the file IF:

Answer 2

1. It is timely submitted (normally before Final Rejection or Allowance)
   AND
2. It is served upon the applicant.

Question 3

When can you file a protest?

Answer 3

Whichever comes first:

(1) Before application is published; or
(2) before Notice of Allowance.

(3) A protest file after Final Rejection (and prior to the date of the NOA) will be considered if the application is still pending.

Throughout pendency of re-issue. This is b/c a protest is not a “form of pre-issuance opposition to the grant of a patent.”

Publication under the PCT of an IA or Geneva Act of a Design Patent Application would not trigger the end of filing a protest.

Question 4

Can the protest participate in the prosecution?

Answer 4

NO and no further submission will be considered.

Question 5

What are ways third parties can get in the way?

Answer 5

Third Party Submissions

Question 6

Third Party Submissions

Answer 6

A third party submits patents and articles for consideration during the patent examination.

Question 7

When can a Third Party Submission be made

Answer 7

Last possible date of either 2 or 3 and the earlier to 1 :
1. The date of the notice of the allowance
OR
2. Six months from the date of the first publication by the USPTO;
OR
3. The date of the first rejection of any claim by the examiner.

Question 8

What must be included in a Third Party Submission?

Answer 8

1. A list identifying the items being submitted;
2. A concise description of the relevance of each item listed;
3. A legible copy of each non-US patent document listed;
4. An English-language translation of any non-English-language item listed;
5. A statement by the party making the submission that the submission complies with the statute and the rule
   AND
6. A statement that the submitting party is not an individual who has a duty to disclose information with respect to the application under 1.56.

AND

7. Fee if more than 3 items and only submission by a party.

Question 9

Concise Description of Relevancy

Answer 9

Can be as much as a claim chart.

Show where each feature shows up.

DO NOT want to make up rejections.

Question 10

How do people privy to the application file this?

Answer 10

IDS

Question 11

Where do these submissions go?

Answer 11

They go to the Parking Lot.

If compliant, those are fed into the File.

If non-compliant, fixed or thrown away.

Question 12

What kind of documents can be submitted in a Protest proceeding?

Answer 12

Any patent, published patent application, or other printed publication of potential relevance to the examination of the application. This includes information demonstrating that the invention was publicly known or used by others and is barred from patenting; information that the invention was in public use or on same; information that the inventor “has abandoned the invention”; information relating to inventorship; information relating to compliance; any other info demonstrating that the application lacks compliance with the statutory requirements for patentability; information indicating fraud or violation of duty of disclosure.

Question 13

When can you submit submission?

Answer 13

In pending applications.