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'''<big>Chapter 1900 Protest</big>''' | '''<big>Chapter 1900 Protest</big>''' | ||
__TOC__ | |||
==1901 Protest Under 37 CFR 1.291== | ==1901 Protest Under 37 CFR 1.291== | ||
37 CFR 1.291. Protests by the public against pending | |||
(a) A protest may be filed by a member of the public against | 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 | a pending application, and it will be matched with the application | ||
file if it adequately identifies the patent application. A protest submitted | file if it adequately identifies the patent application. A protest submitted | ||
Line 17: | Line 21: | ||
practical, or, if return is not practical, discarded. | practical, or, if return is not practical, discarded. | ||
(b) The protest will be entered into the record of the | (b)The protest will be entered into the record of the | ||
application if, in addition to complying with paragraph (c) of this | application if, in addition to complying with paragraph (c) of this | ||
section, the protest has been served upon the applicant in accordance | section, the protest has been served upon the applicant in accordance | ||
Line 26: | Line 30: | ||
1.311 was mailed, whichever occurs first: | 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 | first protest submitted in the application by the real party in interest | ||
who is submitting the protest; or the protest must comply with | who is submitting the protest; or the protest must comply with | ||
paragraph (c)(5) of this section. This section does not apply to the | paragraph (c)(5) of this section. This section does not apply to the | ||
first protest filed in an application. | first protest filed in an application. | ||
(c) In addition to compliance with paragraphs (a) and (b) of | (c)In addition to compliance with paragraphs (a) and (b) of | ||
this section, a protest must include. | this section, a protest must include. | ||
(1)A listing of the patents, publication, or other information | |||
relied upon; | 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 | |||
thereof; | item of information in written form, or at least the pertinent portions | ||
thereof; | |||
(4)An English language translation of all the necessary | |||
or other item of information relied upon; and | 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 | second or subsequent protest are significantly different than those | ||
raised earlier and why the significantly different issue(s) were not | raised earlier and why the significantly different issue(s) were not | ||
presented earlier, and a processing fee under § 1.17(i) must be | presented earlier, and a processing fee under § 1.17(i) must be | ||
submitted. | submitted. | ||
(d) A member of the public filing a protest in an application | (d)A member of the public filing a protest in an application | ||
under this section will not receive any communication from the | under this section will not receive any communication from the | ||
Office relating to the protest, other than the return of a self- | Office relating to the protest, other than the return of a self- | ||
Line 65: | Line 76: | ||
made pursuant to paragraph (c)(5) of this section. | made pursuant to paragraph (c)(5) of this section. | ||
(e) Where a protest raising inequitable conduct issues satisfies | (e)Where a protest raising inequitable conduct issues satisfies | ||
the provisions of this section for entry, it will be entered into | the provisions of this section for entry, it will be entered into | ||
the application file, generally without comment on the inequitable | the application file, generally without comment on the inequitable | ||
conduct issues raised in it. | conduct issues raised in it. | ||
(f) In the absence of a request by the Office, an applicant has | (f)In the absence of a request by the Office, an applicant has | ||
no duty to, and need not, reply to a protest. | no duty to, and need not, reply to a protest. | ||
(g) Protests that fail to comply with paragraphs (b) or (c) of | (g)Protests that fail to comply with paragraphs (b) or (c) of | ||
this section may not be entered, and if not entered, will be | this section may not be entered, and if not entered, will be | ||
returned to the protestor, or discarded, at the option of the Office. | returned to the protestor, or discarded, at the option of the Office. | ||
37 CFR 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 | |||
(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 | 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: | agent, and may be made in any of the following ways: | ||
served; | (1)By delivering a copy of the paper to the person | ||
served; | |||
person served with someone in his employment; | |||
(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 | by leaving a copy at the person’s residence, with some person | ||
of suitable age and discretion who resides there; | 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 | Director that none of the above modes of obtaining or serving | ||
the paper is practicable, service may be by notice published in the | the paper is practicable, service may be by notice published in the | ||
Official Gazette. | Official Gazette. | ||
(b) Papers filed in the Patent and Trademark Office which | |||
(b)Papers filed in the Patent and Trademark Office which | |||
are required to be served shall contain proof of service. Proof of | 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 | 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 | shall include the date and manner of service. In the case of | ||
personal service, proof of service shall also include the name of | personal service, proof of service shall also include the name of | ||
any person served, certified by the person who made service. | any person served, certified by the person who made service. | ||
Proof of service may be made by: | Proof of service may be made by: | ||
person served or | (1)An acknowledgement of service by or on behalf of the | ||
person served or | |||
the information required by this section. | |||
(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 | (c) See § 41.106(e) of this title for service of papers in | ||
contested cases before the Board of Patent Appeals and Interferences. | contested cases before the Board of Patent Appeals and Interferences. | ||
The degree of participation allowed a protestor is | The degree of participation allowed a protestor is | ||
Line 127: | Line 155: | ||
as specified by 35 U.S.C. 122(c). | as specified by 35 U.S.C. 122(c). | ||
It is noted that a protest filed in a reissue application | It is noted that a protest filed in a reissue application | ||
is not a “form of preissuance opposition to the | is not a “form of preissuance opposition to the | ||
grant of a patent” since the patent to be reissued has | grant of a patent” since the patent to be reissued has | ||
Line 166: | Line 194: | ||
(D)an English language translation of all necessary | (D)an English language translation of all necessary | ||
and pertinent parts of any non-English language | and pertinent parts of any non-English language | ||
patent, publication, or other information relied | patent, publication, or other information relied | ||
upon; and | upon; and | ||
Line 210: | Line 238: | ||
A protestor does not, by the mere filing of a protest, | A protestor does not, by the mere filing of a protest, | ||
obtain the “right” to argue the protest before the | obtain the “right” to argue the protest before the | ||
Office. Active participation by a protestor ends with | Office. Active participation by a protestor ends with | ||
the filing of the protest, and no further submission on | the filing of the protest, and no further submission on | ||
Line 218: | Line 252: | ||
reissue application file , only if a self-addressed | reissue application file , only if a self-addressed | ||
postcard is included with the protest (see MPEP | postcard is included with the protest (see MPEP | ||
§ 1901.05). The question of whether or not a patent | § | ||
1901.05). The question of whether or not a patent | |||
will issue is a matter between the applicant and the | will issue is a matter between the applicant and the | ||
Office acting on behalf of the public. | Office acting on behalf of the public. | ||
1901.01Who Can Protest [R-3] | |||
Any member of the public, including private persons, | Any member of the public, including private persons, | ||
Line 237: | Line 273: | ||
people representing the same real party in interest. | people representing the same real party in interest. | ||
1901.02Information Which Can Be | |||
Relied on in Protest [R-3] | |||
Any information which, in the protestor’s opinion, | Any information which, in the protestor’s opinion, | ||
Line 314: | Line 351: | ||
materials is relevant to the protest, protestors are | materials is relevant to the protest, protestors are | ||
encouraged to submit only the relevant portion(s). | encouraged to submit only the relevant portion(s). | ||
In a protest based on an alleged public use or sale | In a protest based on an alleged public use or sale | ||
Line 350: | Line 392: | ||
Such information, if submitted, will be treated | Such information, if submitted, will be treated | ||
in accordance with the guidelines set forth in MPEP | in accordance with the guidelines set forth in MPEP | ||
§ 724 and will be made public if a reasonable examiner | § | ||
724 and will be made public if a reasonable examiner | |||
would consider the information important in | would consider the information important in | ||
deciding whether to allow the application to issue as a | deciding whether to allow the application to issue as a | ||
patent. | patent. | ||
1901.03How Protest Is Submitted [R-3] | |||
A protest under 37 CFR 1.291 must be submitted | A protest under 37 CFR 1.291 must be submitted | ||
Line 424: | Line 468: | ||
Petitions (using Mail Stop Petition), along with as | Petitions (using Mail Stop Petition), along with as | ||
much identifying data for the application as possible. | much identifying data for the application as possible. | ||
Protests which do not adequately identify a pending | Protests which do not adequately identify a pending | ||
Line 482: | Line 531: | ||
Office. 37 CFR 1.291(g). While improper protests | Office. 37 CFR 1.291(g). While improper protests | ||
will be returned or discarded, a new protest by an | will be returned or discarded, a new protest by an | ||
earlier protestor will be proper and can be entered if it complies with 37 CFR 1.291(c)(5). | earlier protestor will be proper and can be entered if it | ||
complies with 37 CFR 1.291(c)(5). | |||
As indicated in 37 CFR 1.291(c)(3), a protest | As indicated in 37 CFR 1.291(c)(3), a protest | ||
Line 512: | Line 562: | ||
can attempt service. | can attempt service. | ||
1901.04When Should the Protest Be | |||
Submitted [R-3] | |||
Except where a protest is accompanied by the | Except where a protest is accompanied by the | ||
written consent of the applicant as provided in 37 | written consent of the applicant as provided in 37 | ||
CFR 1.291(b)(1), a protest under 37 CFR 1.291(a) | CFR 1.291(b)(1), a protest under 37 CFR 1.291(a) | ||
Line 525: | Line 576: | ||
As a practical matter, any protest should be | As a practical matter, any protest should be | ||
submitted as soon as possible after the protestor | submitted as soon as possible after the protestor | ||
becomes aware of the existence of the application to | becomes aware of the existence of the application to | ||
which the protest is to be directed. By submitting a | which the protest is to be directed. By submitting a | ||
Line 539: | Line 596: | ||
the patent date approaches. | the patent date approaches. | ||
A protest filed after final rejection and complying | A protest filed after final rejection and complying | ||
with all the requirements of 37 CFR 1.291 will be | with all the requirements of 37 CFR 1.291 will be | ||
considered if the application is still pending when the | considered if the application is still pending when the | ||
Line 588: | Line 645: | ||
necessary, for the minimum period required, and with | necessary, for the minimum period required, and with | ||
a justification establishing the necessity for the extension. | a justification establishing the necessity for the extension. | ||
Where a protest of a reissue application is submitted | Where a protest of a reissue application is submitted | ||
Line 619: | Line 677: | ||
always be available. | always be available. | ||
1901.05Initial Office Handling and Acknowledgment | |||
of Protest [R-3] | |||
I. PROTESTS REFERRED TO EXAMINER | I. PROTESTS REFERRED TO EXAMINER | ||
Protests filed against pending applications will be | Protests filed against pending applications will be | ||
Line 648: | Line 715: | ||
in time to permit review by the examiner during | in time to permit review by the examiner during | ||
prosecution. | prosecution. | ||
II. PROTEST DOES NOT INDICATE | II. PROTEST DOES NOT INDICATE | ||
Line 671: | Line 740: | ||
by an appropriate notation in the “Contents” | by an appropriate notation in the “Contents” | ||
section of the application file history. | section of the application file history. | ||
III. ACKNOWLEDGMENT OF PROTEST | III. ACKNOWLEDGMENT OF PROTEST | ||
Line 689: | Line 760: | ||
indication that the protest complies with 37 CFR | indication that the protest complies with 37 CFR | ||
1.291. | 1.291. | ||
IV. APPLICATIONS AND STATUS THEREOF | IV. APPLICATIONS AND STATUS THEREOF | ||
Line 717: | Line 790: | ||
March 1, 1977 are pursuant to 37 | March 1, 1977 are pursuant to 37 | ||
CFR 1.11(b) “open | CFR 1.11(b) “open | ||
to inspection by the public.” After an application is | to inspection by the public.” After an application is | ||
published pursuant to 35 U.S.C. 122(b), the application | published pursuant to 35 U.S.C. 122(b), the application | ||
Line 738: | Line 817: | ||
questions raised by the protest. | questions raised by the protest. | ||
1901.06Examiner Treatment of Protest[R-3] | |||
Office practice as defined in 37 CFR 1.291(a) gives | Office practice as defined in 37 CFR 1.291(a) gives | ||
Line 751: | Line 830: | ||
basis as other ex parte evidence. In re Reuter, 651 | basis as other ex parte evidence. In re Reuter, 651 | ||
F.2d 751, 758, 210 USPQ 249, 255 (CCPA 1981). | F.2d 751, 758, 210 USPQ 249, 255 (CCPA 1981). | ||
I. INITIAL REVIEW | I. INITIAL REVIEW | ||
Line 782: | Line 863: | ||
Administration before considering the protest and acting | Administration before considering the protest and acting | ||
on the applications. | on the applications. | ||
II. PERIOD FOR COMMENTS BY APPLICANT | II. PERIOD FOR COMMENTS BY APPLICANT | ||
If the primary examiner’s initial review reveals that | If the primary examiner’s initial review reveals that | ||
Line 794: | Line 878: | ||
1 month, unless circumstances warrant a longer | 1 month, unless circumstances warrant a longer | ||
period. | 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 | Where necessary or desirable to decide questions | ||
Line 800: | Line 910: | ||
the protest and answer specific questions raised by the | the protest and answer specific questions raised by the | ||
protest. The primary examiner cannot require a reply | protest. The primary examiner cannot require a reply | ||
to questions relating to “fraud,” “inequitable conduct,” | to questions relating to “fraud,” “inequitable conduct,” | ||
or “violation of the duty of disclosure” since | or “violation of the duty of disclosure” since | ||
Line 815: | Line 931: | ||
ensure that the required information is necessary to | ensure that the required information is necessary to | ||
the decision to be made. | 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 ONE MONTH | |||
or THIRTY DAYS, whichever is longer, 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 | III. PROTESTOR NOT PERMITTED TO | ||
Line 829: | Line 969: | ||
will be returned to the protestor, or discarded, | will be returned to the protestor, or discarded, | ||
at the option of the Office. 37 CFR 1.291(g). | at the option of the Office. 37 CFR 1.291(g). | ||
IV. TREATMENT OF TIMELY SUBMITTED | IV. TREATMENT OF TIMELY SUBMITTED | ||
PROTEST | PROTEST | ||
If the protest has been timely submitted and is | If the protest has been timely submitted and is | ||
entered into the record of the application in time to | entered into the record of the application in time to | ||
permit review by the examiner during prosecution, the | permit review by the examiner during prosecution, the | ||
Line 880: | Line 1,022: | ||
conformance with 37 CFR 1.291(c), the examiner | conformance with 37 CFR 1.291(c), the examiner | ||
must, for all those documents considered but not listed | must, for all those documents considered but not listed | ||
on the form PTO-892, (A) mark “checked” and | on the form PTO-892, (A) mark “checked” and | ||
place the examiner’s initials beside each citation, or | place the examiner’s initials beside each citation, or | ||
Line 892: | Line 1,040: | ||
considered, place the examiner’s initials adjacent | considered, place the examiner’s initials adjacent | ||
to the citations in the boxes provided on the form | to the citations in the boxes provided on the form | ||
PTO/SB/08A and 08B. Where the prior art or | PTO/SB/08A and 08B. Where the prior art or | ||
other documents are listed by the protestor on form | other documents are listed by the protestor on form | ||
PTO/SB/08A and 08B, but are not submitted in full | PTO/SB/08A and 08B, but are not submitted in full | ||
Line 905: | Line 1,053: | ||
by the protestor, and clearly state the examiner’s position | by the protestor, and clearly state the examiner’s position | ||
thereon in detail. 37 CFR 1.291(e). | thereon in detail. 37 CFR 1.291(e). | ||
V. PROTEST FILED AFTER ALLOWANCE | V. PROTEST FILED AFTER ALLOWANCE | ||
OR THE PUBLICATION OF THE APPLICATION | OR THE PUBLICATION OF THE APPLICATION | ||
A.Without the Written Consent of Applicant | A.Without the Written Consent of Applicant | ||
Line 921: | Line 1,074: | ||
protest will vary depending on the particular situation | protest will vary depending on the particular situation | ||
as follows. | as follows. | ||
1. Service of Copy Included | 1. Service of Copy Included | ||
Line 927: | Line 1,082: | ||
of copy on the applicant, the original protest should be | of copy on the applicant, the original protest should be | ||
discarded. | discarded. | ||
2. Service of Copy Not Included | 2. Service of Copy Not Included | ||
Line 935: | Line 1,092: | ||
should be sent to the applicant along with the notification | should be sent to the applicant along with the notification | ||
of nonentry. | of nonentry. | ||
B.With the Written Consent of Applicant | B.With the Written Consent of Applicant | ||
Line 971: | Line 1,130: | ||
a single protest by a particular party in interest | a single protest by a particular party in interest | ||
(e.g., a protest that party Smith has informed me that | (e.g., a protest that party Smith has informed me that | ||
he will be submitting during the week of November | he will be submitting during the week of November | ||
26th); a protest involving a particular item of prior art; | 26th); a protest involving a particular item of prior art; | ||
Line 985: | Line 1,150: | ||
may choose to consider a piece of prior art permitted | may choose to consider a piece of prior art permitted | ||
under the terms of the consent. | under the terms of the consent. | ||
VI. COPIES OF DOCUMENTS NOT SUBMITTED | VI. COPIES OF DOCUMENTS NOT SUBMITTED | ||
If the protest is not accompanied by a copy of each | If the protest is not accompanied by a copy of each | ||
Line 1,000: | Line 1,168: | ||
examiner considered a document not submitted, the | examiner considered a document not submitted, the | ||
next Office action will so indicate. | next Office action will so indicate. | ||
VII. CONSIDERATION OF PROTESTOR’S | VII. CONSIDERATION OF PROTESTOR’S | ||
Line 1,019: | Line 1,189: | ||
directed to “fraud,” “inequitable conduct,” or “violation | directed to “fraud,” “inequitable conduct,” or “violation | ||
of duty of disclosure.” 37 CFR 1.291(e). | of duty of disclosure.” 37 CFR 1.291(e). | ||
VIII. RESULTS OF CONSIDERATION REPORTED | VIII. RESULTS OF CONSIDERATION REPORTED | ||
Line 1,028: | Line 1,200: | ||
to the TC Director. | to the TC Director. | ||
1901.07Protestor Participation [R-3] | |||
37 CFR 1.291 does not permit protestor, or any | 37 | ||
CFR 1.291 does not permit protestor, or any | |||
other member of the public, to contact or receive | other member of the public, to contact or receive | ||
information from the Office as to the disposition or | information from the Office as to the disposition or | ||
Line 1,044: | Line 1,217: | ||
Patent Appeals and Interferences, or participate in an | Patent Appeals and Interferences, or participate in an | ||
appeal by applicant. The disposition of the protest will | appeal by applicant. The disposition of the protest will | ||
be an ex parte matter between the Office and the | be an ex parte matter between the Office and the | ||
applicant. Where protestor has access to an application, | applicant. Where protestor has access to an application, | ||
for example, a reissue application which is open | for example, a reissue application which is open | ||
Line 1,055: | Line 1,228: | ||
the protestor. | the protestor. | ||
1901.07(a)Filing of Multiple Papers | |||
Relating to Same Issues [R-3] | |||
Under 37 CFR 1.291(d), protestor participation | Under 37 CFR 1.291(d), protestor participation | ||
Line 1,066: | Line 1,240: | ||
(raising a slightly different issue in each protest | (raising a slightly different issue in each protest | ||
submission) in a single application by the same real | submission) in a single application by the same real | ||
party in interest are not permitted. After the filing of | party in interest are not permitted. After the filing of | ||
the initial protest, no further submission of prior art by | the initial protest, no further submission of prior art by | ||
Line 1,111: | Line 1,291: | ||
complies with 37 CFR 1.291(c)(5). | complies with 37 CFR 1.291(c)(5). | ||
1906Supervisory Review of an Examiner’s | |||
Decision Adverse to Protestor | |||
[R-3] | |||
As pointed out in MPEP § 1901.07, a protestor cannot | As pointed out in MPEP § 1901.07, a protestor cannot | ||
Line 1,121: | Line 1,303: | ||
not petitionable to the Director. | not petitionable to the Director. | ||
1907Unauthorized Participation by | |||
Protestor [R-3] | |||
Office personnel must exercise care to ensure that | Office personnel must exercise care to ensure that | ||
Line 1,128: | Line 1,311: | ||
writing ex parte to protestor. The examiner must not | writing ex parte to protestor. The examiner must not | ||
communicate in any manner with protestor. See | communicate in any manner with protestor. See | ||
37 CFR 1.291(d). | 37 | ||
CFR 1.291(d). | |||
1920Citation of Prior Art Under 37 | |||
CFR 1.501(a) | |||
37 CFR 1.501(a) permits any person at any time | 37 CFR 1.501(a) permits any person at any time |