Editing MPEP 1900
From wikilawschool.net. Wiki Law School does not provide legal advice. For educational purposes only.
The edit can be undone. Please check the comparison below to verify that this is what you want to do, and then publish the changes below to finish undoing the edit.
Latest revision | Your text | ||
Line 3: | Line 3: | ||
'''<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== | ||
{{Statute|37 CFR 1.291. Protests by the public against pending applications.}} | {{Statute|37 CFR 1.291. Protests by the public against pending applications.}} | ||
(a) A protest may be filed by a member of the public against | |||
(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 18: | ||
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 27: | ||
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 72: | ||
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. | ||
Line 80: | Line 87: | ||
{{Statute|37 CFR 1.248. Service of papers; manner of service; proof of service; proof of service in cases other than interferences.}} | {{Statute|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 | ||
Line 102: | Line 117: | ||
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. | ||
Line 892: | Line 910: | ||
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 1,044: | Line 1,062: | ||
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 |