Editing MPEP 1900

{{MPEP Chapter|1800|2000}}

'''<big>Chapter 1900 Protest</big>'''

<div class="noautonum">__TOC__</div>

==1901 Protest Under 37 CFR 1.291==

{{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 pending application, and it will be matched with the application 
file if it adequately identifies the patent application. A protest submitted 
within the time frame of paragraph (b) of this section, 
which is not matched in a timely manner to permit review by the 
examiner during prosecution, due to inadequate identification, 
may not be entered and may be returned to the protestor where 
practical, or, if return is not practical, discarded.

(b) The protest will be entered into the record of the 
application if, in addition to complying with paragraph (c) of this 
section, the protest has been served upon the applicant in accordance 
with § 1.248, or filed with the Office in duplicate in the 
event service is not possible; and, except for paragraph (b)(1) of 
this section, the protest was filed prior to the date the application 
was published under § 1.211, or a notice of allowance under §
1.311 was mailed, whichever occurs first:

<p style="padding-left: +40px;">(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.</p>

<p style="padding-left: +40px;">(2) A statement must accompany a protest that it is the 
first protest submitted in the application by the real party in interest 
who is submitting the protest; or the protest must comply with 
paragraph (c)(5) of this section. This section does not apply to the 
first protest filed in an application.</p>

(c) In addition to compliance with paragraphs (a) and (b) of 
this section, a protest must include.

<p style="padding-left: +40px;">(1) A listing of the patents, publication, or other information 
relied upon;</p>

<p style="padding-left: +40px;">(2) A concise explanation of the relevance of each item listed pursuant to paragraph (c)(1) of this section;</p>

<p style="padding-left: +40px;">(3) A copy of each listed patent, publication, or other item of information in written form, or at least the pertinent portions 
thereof;</p>

<p style="padding-left: +40px;">(4) An English language translation of all the necessary and pertinent parts of any non-English language patent, publication, 
or other item of information relied upon; and</p>

<p style="padding-left: +40px;">(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 
raised earlier and why the significantly different issue(s) were not 
presented earlier, and a processing fee under § 1.17(i) must be 
submitted.</p>

(d) A member of the public filing a protest in an application 
under this section will not receive any communication from the 
Office relating to the protest, other than the return of a self-
addressed postcard which the member of the public may include 
with the protest in order to receive an acknowledgement by the 
Office that the protest has been received. The limited involvement 
of the member of the public filing a protest pursuant to this section 
ends with the filing of the protest, and no further submission on 
behalf of the protestor will be considered, unless the submission is 
made pursuant to paragraph (c)(5) of this section.

(e) Where a protest raising inequitable conduct issues satisfies 
the provisions of this section for entry, it will be entered into 
the application file, generally without comment on the inequitable 
conduct issues raised in it.

(f) In the absence of a request by the Office, an applicant has 
no duty to, and need not, reply to a protest.

(g) Protests that fail to comply with paragraphs (b) or (c) of 
this section may not be entered, and if not entered, will be 
returned to the protestor, or discarded, at the option of the Office.
|}


{{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 
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:
<p style="padding-left: +40px;">(1) By delivering a copy of the paper to the person 
served;</p>
<p style="padding-left: +40px;">(2) By leaving a copy at the usual place of business of the 
person served with someone in his employment;</p>
<p style="padding-left: +40px;">(3) When the person served has no usual place of business, 
by leaving a copy at the person’s residence, with some person 
of suitable age and discretion who resides there;</p>
<p style="padding-left: +40px;">(4) Transmission by first class mail. When service is by mail the date of mailing will be regarded as the date of service;</p>
<p style="padding-left: +40px;">(5) Whenever it shall be satisfactorily shown to the  
Director that none of the above modes of obtaining or serving 
the paper is practicable, service may be by notice published in the 
Official Gazette.</p>
(b) Papers filed in the Patent and Trademark Office which 
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 
shall include the date and manner of service. In the case of 
personal service, proof of service shall also include the name of 
any person served, certified by the person who made service. 
Proof of service may be made by:
<p style="padding-left: +40px;">(1) An acknowledgement of service by or on behalf of the 
person served or</p>
<p style="padding-left: +40px;">(2) A statement signed by the attorney or agent containing 
the information required by this section.</p>
(c) See § 41.106(e) of this title for service of papers in 
contested cases before the Board of Patent Appeals and Interferences.
|}

The degree of participation allowed a protestor is 
solely within the discretion of the  Director of the 
USPTO. 

37 CFR 1.291  gives recognition to the value of 
written protests in bringing information to the attention 
of the Office and in avoiding the issuance of 
invalid patents.  With the exception of a protest 
accompanied by a written consent of the applicant, 
all protests must be submitted prior to the publication 
of the application or the mailing of a notice of 
allowance, whichever occurs first. No protest or 
other form of preissuance opposition to the grant of a 
patent may be initiated after publication of the application 
without the applicant’s express written consent 
as specified by 35 U.S.C. 122(c). 

It is noted that a protest filed in a reissue application 
is not a “form of preissuance opposition to the 
grant of a patent” since the patent to be reissued has 
already been granted. Thus, a protest may be filed in a 
reissue application throughout the pendency of the 
reissue application prior to the date of mailing of a 
notice of allowance subject to the timing constraints 
of the examination. A protest with regard to a reissue 
application should, however, be filed within the 2-
month period following the announcement of the filing 
of the reissue application in the Official Gazette. 
See MPEP § 1441.01 for guidance as to the filing of a 
protest in a reissue application.

37 CFR 1.291(b) provides that a protest will be 
entered into the record of the application if, in addition 
to complying with the requirements of 37 CFR 
1.291(c), the protest is either served upon the applicant, 
or is filed in duplicate in the event service is not 
possible. In the event a duplicate protest is enclosed 
for the applicant, the protest should be accompanied 
by an explanation of why service on applicant could 
not be made.

37 CFR 1.291(c) requires that the protest must 
include:

(A)a listing of the patents, publications, or other 
information relied on; 

(B)a concise explanation of the relevance of each 
listed item; 

(C)a copy of each listed patent, publication, or 
other item of information in written form, or at least 
the pertinent portions thereof; 

(D)an English language translation of all necessary 
and pertinent parts of any non-English language 
patent, publication, or other information relied 
upon; and

(E)if the protest is a second or subsequent protest 
by the same real party in interest, the protest must further 
include:

(1)an explanation as to why the issue(s) being 
raised in the second or subsequent protest are significantly 
different than those raised earlier;

(2)an explanation as to why the significantly different 
issue(s) were not presented to the Office earlier; 
and

(3)the processing fee under 37 CFR 1.17(i).

Note that item (E) above does not apply if the protest 
is accompanied by a statement that it is the first 
protest submitted in the application by the real party 
in interest, or if the protest is the first protest ever to 
be filed in the application. 37 CFR 1.291(b)(2).

A party obtaining knowledge of an application 
pending in the Office may file a protest against the 
application and may therein call attention to any facts 
within protestor’s knowledge which, in the protestor’s 
opinion, would make the grant of a patent 
on the application improper. The party should 
include with the protest whatever information the 
party is aware of that would facilitate identification of 
the application and matching the protest with the 
application. If there is insufficient information to 
identify the application, the protest may not be 
matched at all or not timely matched with the 
intended application to permit review by the examiner 
during prosecution of the application, in which case, 
the protest may not be entered and may be returned to 
the protestor where practical. If return is not practical, 
the protest will be discarded. 37 CFR 1.291(a). See 
MPEP § 1901.03.

A protestor does not, by the mere filing of a protest, 
obtain the “right” to argue the protest before the 
Office. Active participation by a protestor ends with 
the filing of the protest, and no further submission on 
behalf of the protestor will be considered,  unless 
the submission is made pursuant to 37 CFR 
1.291(c)(5). See 37 CFR 1.291(d). The USPTO will 
acknowledge the receipt of a protest in an original or a 
reissue application file , only if a self-addressed 
postcard is included with the protest (see MPEP 
§ 1901.05). The question of whether or not a patent 
will issue is a matter between the applicant and the 
Office acting on behalf of the public.

===1901.01 Who Can Protest===

Any member of the public, including private persons, 
corporate entities, and government agencies, 
may file a protest under 37 CFR 1.291. A protest may 
be filed by an attorney or other representative on 
behalf of an unnamed  real party in interest. 37 
CFR 1.291 does not require that the real party in interest 
be identified. Where a protest is not the first protest 
by the real party in interest, 37 CFR 1.291(b)(2) 
requires compliance with 37 CFR 1.291(c)(5). 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.

===1901.02 Information Which Can Be Relied on in Protest===

Any information which, in the protestor’s opinion, 
would make the grant of a patent improper can be 
relied on in a protest under 37 CFR 1.291. While 
prior art documents, such as patents and publications, 
are most often the types of information relied on in 
protests, 37 CFR 1.291 is not limited to prior art documents. 
Protests may be based on any facts or information 
adverse to patentability. The content and 
substance of the protest are more important than 
whether prior art documents, or some other form of 
evidence adverse to patentability, are being relied on. 
The Office recognizes that when evidence other than 
prior art documents is relied on, problems may arise 
as to authentication and the probative value to assign 
to such evidence. However, the fact that such problems 
may arise, and have to be resolved, does not preclude 
the Office from considering such evidence, nor 
does it mean that such evidence cannot be relied on in 
a protest under 37 CFR 1.291. Information in a protest 
should be set forth in the manner required by 37 CFR 
1.291(c).

The following are examples of the kinds of information, 
in addition to prior art documents, which can 
be relied on in a protest under 37 CFR 1.291:

(A)Information demonstrating that the inven-
tion 
was publicly “known or used by others in this 
country... before the invention thereof by the applicant 
for patent” and is therefore barred under 35 U.S.C. 
102(a) and/or 103.

(B)Information that the invention was “in public 
use or on sale in this country, more than 1 year prior to 
the date of the application for patent in the United 
States” (35 U.S.C. 102(b)).

(C)Information that the applicant “has abandoned 
the invention” (35 U.S.C. 102(c)) or “did not 
himself invent the subject matter sought to be patented” 
(35 U.S.C. 102(f)).

(D)Information relating to inventorship under 
35 
U.S.C. 102(g).

(E)Information relating to sufficiency of disclosure 
or failure to disclose best mode, under 35 U.S.C. 
112.

(F)Any other information demonstrating that the 
application lacks compliance with the statutory 
requirements for patentability.

(G)Information indicating “fraud” or “violation 
of the duty of disclosure” under 37 CFR 1.56 may be 
the subject of a protest under 37 CFR 1.291. Protests 
raising fraud or other inequitable conduct issues will 
be entered in the application file, generally without 
comment on those issues. 37 CFR 1.291(e).

Different forms of evidence may accompany, or be 
submitted as a part of, a protest under 37 CFR 1.291. 
Conventional prior art documents such as patents and 
publications are the most common form of evidence. 
However, other forms of evidence can likewise be 
submitted. Some representative examples of other 
forms of evidence are litigation-related materials such 
as complaints, answers, depositions, answers to interrogatories, 
exhibits, transcripts of hearings or trials, 
court orders and opinions, stipulations of the parties, 
etc. Where only a portion of the litigation-related 
materials is relevant to the protest, protestors are 
encouraged to submit only the relevant portion(s).

In a protest based on an alleged public use or sale 
by, or on behalf of, the applicant or applicant’s 
assignee, evidence of such public use or sale may be 
submitted along with affidavits or declarations identifying 
the source(s) of the evidence and explaining its 
relevance and meaning. Such evidence might include 
documents containing offers for sale by applicant or 
applicant’s assignee, orders, invoices, receipts, delivery 
schedules, etc. The Office will make a decision as 
to whether or not public use or sale has been established 
based on the evidence the Office has available. 
If applicant denies the authenticity of the documents 
and/or evidence, or if the alleged public use and/or 
sale is by a party other than applicant or applicant’s 
assignee, protestor may find it desirable or necessary 
to proceed via 37 CFR 1.292 (public use proceedings) 
rather than by a protest under 37 CFR 1.291.

While the forms in which evidence and/or information 
may be submitted with, or as a part of, a protest 
under 37 CFR 1.291, are not limited, protestors must 
recognize that such submissions may encounter problems 
such as establishing authenticity and/or the probative 
value to apply to the evidence. Obviously, the 
Office will have to evaluate each item of evidence 
and/or information submitted with a view as to both 
its authenticity and what weight to give thereto.

Information which is subject to a court-imposed 
protective or secrecy order may be submitted with, or 
as a part of, a protest under 37 CFR 1.291. Trade 
secret information which was obtained by a protestor 
through agreements with others can likewise be submitted. 
Such information, if submitted, will be treated 
in accordance with the guidelines set forth in MPEP 
§ 724 and will be made public if a reasonable examiner 
would consider the information important in 
deciding whether to allow the application to issue as a 
patent.

===1901.03 How Protest Is Submitted===

A protest under 37 CFR 1.291 must be submitted 
in writing, must specifically identify the application to 
which the protest is directed by application number or 
serial number and filing date, and must include a listing 
of all patents, publications, or other information 
relied on; a concise explanation of the relevance of 
each listed item; an English language translation of all 
relevant parts of any non-English language  patent, 
publication, or other information relied upon; and be 
accompanied by a copy of each patent, publication, or 
other document relied on. Protestors are encouraged 
to use form  PTO/SB/08A and 08B “Information 
Disclosure Statement By Applicant” (or an equivalent 
form) when preparing a protest under 37 CFR 
1.291, especially the listing enumerated under 37 
CFR 1.291(c)(1). See MPEP § 609.04(a). In 
addition, the protest and any accompanying papers 
must either (1) reflect that a copy of the same has 
been served upon the applicant or upon the applicant’s 
attorney or agent of record; or (2) be filed with the 
Office in duplicate in the event service is not possible.

It is important that any protest against a pending 
application specifically identify the application to 
which the protest is directed with the identification 
being as complete as possible. If possible, the following 
information should be placed on the protest:

(A)Name of Applicant(s).

(B)Application number (mandatory).

(C)Filing date of application.

(D)Title of invention.

(E)Group art unit number (if known).

(F)Name of examiner to whom the application is 
assigned (if known).

(G)Current status and location of application (if 
known).

(H)The word “ATTENTION:” followed by the 
area of the Office to which the protest is directed as 
set forth below.

In addition to the above information, the protest 
itself should be clearly identified as a “PROTEST 
UNDER 37 CFR 1.291.” If the protest includes 
exhibits or other attachments, these should also contain 
identifying information thereon in order to prevent 
them from becoming inadvertently separated and 
lost.

Any protest can be submitted by mail to the  Commissioner 
for Patents,  P.O. Box 1450, Alexandria, 
VA 22313-1450, and should be directed to the attention 
of the Director of the particular Technology Center 
in which the application is pending. If the protestor 
is unable to specifically identify the application to 
which the protest is directed, but, nevertheless, 
believes such an application to be pending, the protest 
should be directed to the attention of the Office of 
Petitions (using Mail Stop Petition), along with as 
much identifying data for the application as possible. 

Protests which do not adequately identify a pending 
patent application will be returned to the protestor or 
discarded, and will not be further considered by the 
Office.

Where a protest is directed to a reissue application 
for a patent which is involved in litigation, the outside 
envelope and the top right-hand portion of the protest 
should be marked with the words “REISSUE LITIGATION.” 
The notations preferably should be written 
in a bright color with a felt point marker. Any “REISSUE 
LITIGATION” protest mailed to the Office 
should be so marked and mailed to  Mail Stop 
Petition, Commissioner for Patents, P.O. Box 1450, 
Alexandria, VA 22313-1450. 

INITIAL PROTEST SUBMISSION MUST BE 
COMPLETE 

A protest must be complete and contain a copy of 
every document relied on by the protestor, whether 
the document is a prior art document, court litigation 
material, affidavit, or declaration, etc., because a protestor 
will not be given an opportunity to supplement 
or complete any protest which is incomplete. Active 
participation by protestor ends with the filing of the 
initial protest, as provided in 37 CFR 1.291(d), 
and no further submission on behalf of protestor will 
be acknowledged or considered,  unless the submission 
is made pursuant to 37 CFR 1.291(c)(5). 37 
CFR 1.291(c)(5) requires that any further submission 
by the same party in interest must be directed to significantly 
different issue(s) than those raised in the 
earlier protest. 37 CFR 1.291(c)(5) requires (A) an 
explanation as to how the issue(s) raised are significantly 
different, (B) why the different issue(s) were 
not presented in the earlier protest, and (C) the processing 
fee under 37 CFR 1.17(i). Submissions
which will not be entered in the application file 
include  further submissions in violation of 37 CFR 
1.291 by which protestor merely seeks to participate 
in the examination process. For example, mere arguments 
relating to an Office action or an applicant’s 
reply would not qualify as a new protest. Likewise, 
additional comments seeking to bring in further or 
even new data or information with respect to an issue 
previously raised by protestor would not qualify as a 
new protest. The Office will not add these arguments 
or comments to the original protest and will not enter 
them in the application file.

Even new protests which also argue Office actions 
or replies or any matter beyond the new issue should 
not be accepted. Improper protests will be returned 
to the protestor, or discarded, at the option of the 
Office. 37 CFR 1.291(g). While improper protests 
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).

As indicated in 37 CFR 1.291(c)(3), a protest 
must be accompanied by a copy of each prior art document 
relied on in order to ensure consideration by 
the examiner, although a protest without copies of 
prior art documents will not necessarily be ignored. 
While a protest without copies of documents will not 
necessarily be ignored, the submission of such documents 
with the protest will obviously expedite  consideration 
of the documents, which consideration 
might not otherwise occur. Further, some documents 
which are available to protestor may not be otherwise 
available to the Office.

Every effort should be made by a protestor to serve 
a copy of the protest upon the attorney or agent of 
record or upon the applicant if no attorney or agent is 
of record. Of course, the copy served upon applicant 
or upon applicant’s attorney or agent should be a complete 
copy including a copy of each prior art or other 
document relied on in the same manner as required by 
37 CFR 1.291(c)(3) for the Office copy. The protest 
filed in the Office should reflect, by an appropriate 
“Certificate of Service,” that service has been 
made as provided in 37 CFR 1.291(b). Only in 
those instances where service is not possible should 
the protest be filed in duplicate in order that the Office 
can attempt service.

===1901.04 When Should the Protest Be Submitted===

Except where a protest is accompanied by the 
written consent of the applicant as provided in 37 
CFR 1.291(b)(1), a protest under 37 CFR 1.291(a)
must be submitted prior to the date the application 
was published under 37 CFR 1.211 or the mailing 
of a notice of allowance under 37 CFR 1.311, whichever 
occurs first, and the application must be pending 
when the protest and application file are brought 
before the examiner in order to be ensured of consideration. 
As a practical matter, any protest should be 
submitted as soon as possible after the protestor 
becomes aware of the existence of the application to 
which the protest is to be directed. By submitting a 
protest early in the examination process, i.e., before 
the Office acts on the application if possible, the protestor 
ensures that the protest will receive maximum 
consideration and will be of the most benefit to the 
Office in its examination of the application. A protest 
submitted after the mailing of the notice of allowance 
will not knowingly be ignored if the protest includes 
prior art documents which clearly anticipate or clearly 
render obvious one or more claims. However, the 
likelihood of consideration of a protest decreases as 
the patent date approaches.

A protest filed after final rejection and complying 
with all the requirements of 37 CFR 1.291 will be 
considered if the application is still pending when the 
protest and application are provided to the examiner. 
However, prosecution will not ordinarily be reopened 
after final rejection if the prior art cited in the protest 
is merely cumulative of the prior art cited in the final 
rejection.  

A protest filed in a reissue application is not a 
“form of preissuance opposition to the grant of a 
patent” since the patent to be reissued has already 
been granted. Thus, a protest may be filed in a reissue 
application throughout the pendency of the reissue 
application prior to the date of mailing of a notice of 
allowance subject to the timing constraint of the 
examination. A protest with regard to a reissue 
application should, however, be filed within the 2-
month period following announcement of the filing of 
the reissue application in the Official Gazette. See 
MPEP § 1441.01. If, for some reason, the protest of 
the reissue application cannot be filed within the 2-
month period provided by MPEP § 1441, the protest 
can be submitted at a later time, but the protestor must 
be aware that reissue applications are “special” and a 
later filed protest may be received after action by the 
examiner. Any request by a protestor in a reissue 
application for an extension of the 2-month period 
following the announcement in the Official Gazette , 
and a delay of the examination until the extended 
period expires, will be considered only if filed in the 
form of a petition under 37 CFR 1.182 and accompanied 
by the petition fee set forth in 37 CFR 
1.17(f). The petition under 37 CFR 1.182 and the 
petition fee must be filed prior to the expiration of the 
2-month period provided by MPEP § 1441. The petition 
must explain why the additional time is necessary 
and the nature of the protest intended. A copy of such 
petition must be served upon applicant in accordance 
with 37 CFR 1.248. The petition should be directed to 
the appropriate Technology Center (TC) which will 
forward the petition to the Office of  Patent Legal 
Administration for decision. Any such petition will 
be critically reviewed as to demonstrated need before 
being granted since the delay of examination of a reissue 
application of another party is being requested. 
Accordingly, the requests should be made only where 
necessary, for the minimum period required, and with 
a justification establishing the necessity for the extension.

Where a protest of a reissue application is submitted 
after the 2-month period, no petition for entry of 
the protest under 37 CFR 1.182 is needed with respect 
to the protest being submitted after the 2 months, 
unless a final rejection has been issued or prosecution 
on the merits has been closed for the reissue application. 
See MPEP § 1441.01. In situations where a final 
rejection has been issued, or prosecution on the merits 
has been otherwise closed, a petition under 37 CFR 
1.182 along with the petition fee under 37 CFR 
1.17(f) must be submitted with the protest. The petition 
must include an explanation as to why the additional 
time was necessary and identify the nature of 
the protest submitted. A copy of the petition must be 
served upon the applicant in accordance with 37 CFR 
1.248. The petition should be directed to the Office of 
Petitions.

If the protest is a “REISSUE LITIGATION” protest, 
it is particularly important that it be filed early if 
protestor wishes it considered at the time the Office 
first acts on the application. Protestors should be 
aware that the Office will entertain petitions from 
reissue applicants under 37 CFR 1.182  to waive 
the 2-month delay period of MPEP § 1441 in appropriate 
circumstances. Accordingly, protestors to reissue 
applications cannot automatically assume that the 
full 2-month delay period of MPEP § 1441 will 
always be available. 

===1901.05 Initial Office Handling and Acknowledgment of Protest===

I. PROTESTS REFERRED TO EXAMINER

Protests filed against pending applications will be 
referred to the examiner having charge of the application 
involved. 37 CFR 1.291(a). A protest specifically 
identifying the application to which it is 
directed will be entered in the application file, if 
(A) the protest is accompanied by a written 
consent of the applicant or is submitted prior to 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, (see MPEP § 
1901.04)  ,(B) a copy of the protest has been 
served on applicant in accordance with 37 CFR 
1.248, or a duplicate copy is filed with the Office in 
the event service is not possible , and (C) the protest 
complies with the content requirements of 37 
CFR 1.291(c). 37 
CFR 1.291(b).

A protest where the application is specifically identified, 
which is submitted in conformance with 
37 
CFR 1.291(a), (b), and (c), will be considered 
by the Office if the protest is matched with the application 
in time to permit review by the examiner during 
prosecution.

II. PROTEST DOES NOT INDICATE 
SERVICE

If the protest filed in the Office does not, however, 
indicate service on applicant or applicant’s attorney or 
agent, and is not filed in duplicate, then the Office 
may undertake to determine whether or not service 
has been made by contacting applicant or applicant’s 
attorney or agent by telephone or in writing to ascertain 
if service has been made. If service has not been 
made and no duplicate has been filed, then the Office 
may request protestor to file such a duplicate before 
the protest is referred to the examiner. Alternatively, if 
the protest involves only a few pages, the Office may, 
in its sole discretion, elect to reproduce the protest 
rather than delay referring it to the examiner. If duplicate 
protest papers are mailed to applicant or applicant’s 
attorney or agent by the Office, the application 
file should reflect that fact, either by a letter transmitting 
the protest or, if no transmittal letter is used, simply 
by an appropriate notation in the “Contents” 
section of the application file  history.

III. ACKNOWLEDGMENT OF PROTEST

A protestor in an original or reissue application will 
not receive any communications from the Office relating 
to the protest, or to the application, other than the 
return of a self-addressed postcard which protestor 
may include with the protest in order to receive an 
acknowledgment that the protest has been received by 
the Office. 37 CFR 1.291(d). Where a self-
addressed postcard is included with the protest, the
Office will acknowledge a protest by return of the 
self-addressed postcard prior to the protest’s entry 
into the application file or return to the protestor, as 
appropriate. Thus, it is to be noted that the receipt of 
the self-addressed postcard from the Office is not an 
indication that the protest complies with 37 CFR 
1.291.

IV. APPLICATIONS AND STATUS THEREOF 
MAINTAINED IN CONFIDENCE

The postcard acknowledging receipt of a protest in 
other than a reissue application will not and must not 
indicate whether such application in fact exists or the 
status of any such application. Office employees must 
exercise care to ensure that matters relating to applications 
are not discussed with protestor or communicated 
in writing to protestor. Original applications are, 
of course, required by 35 U.S.C. 122 to be kept in 
confidence unless published pursuant to 35 
U.S.C. 
122(b) or are available to the public pursuant to 37 
CFR 1.14(a)(1)(iv), (v), or (vi). Thus, unless a protestor 
has been granted access to an original application, 
the protestor is not entitled to obtain from the 
Office any information concerning the same, including 
the mere fact that such an application exists. Petitions 
for access to patent applications with the 
exception of applications involved in or related to a 
proceeding before the Board of Patent Appeals or 
Interferences are decided by the Office of Petitions 
pursuant to delegation contained in MPEP § 
1002.02(b). Reissue applications filed on, or after, 
March 1, 1977 are pursuant to 37 
CFR 1.11(b) “open 
to inspection by the  public.” After an application is 
published pursuant to 35 U.S.C. 122(b), the application 
file contents become available to the public over 
the Internet through the Office’s public Patent Application 
Information Retrieval (PAIR) website. In addition, 
a copy of the file  content of the published 
application may be requested by filing a written 
request under 37 CFR 1.14(a)(1) including the fee 
as set forth in 37 CFR 1.19(b). 

The Office will communicate with the applicant 
regarding any protest entered in an application file 
and may require the applicant to supply information 
pursuant to 37 CFR 1.291(f), including replies to 
specific questions raised by the protest, in order for 
the Office to decide any issues raised thereby. Under 
37 
CFR 1.291(f), the examiner can require the 
applicant to reply to the protest and answer specific 
questions raised by the protest.

===1901.06 Examiner Treatment of Protest===

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.

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.

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.

===1901.07 Protestor Participation===

37 CFR 1.291 does not permit protestor, or any 
other member of the public, to contact or receive 
information from the Office as to the disposition or 
status of the protest, or the application to which it is 
directed, or to participate in any Office proceedings 
relating to the protest. The Office does not serve copies 
of Office actions or other documents mailed by the 
Office on protestors, and does not require applicants 
to serve copies of papers filed with the Office on protestors. 
Furthermore, a protestor is not permitted to 
participate in interviews, appeal a decision by the 
examiner adverse to the protestor to the Board of 
Patent Appeals and Interferences, or participate in an 
appeal by applicant. The disposition of the protest will 
 be an ex parte matter between the Office and the 
applicant. Where protestor has access to an application, 
for example, a reissue application which is open 
to the public and may be inspected under 37 CFR 
1.11, the proceedings may thereby be monitored.

Under 37 CFR 1.291(f), applicant may be 
required by the Office to reply to a protest. Any reply 
thereto would be ex parte and would not be served on 
the protestor. 

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

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).

==1906 Supervisory Review of an Examiner’s Decision Adverse to Protestor==

As pointed out in MPEP § 1901.07, a protestor cannot 
appeal to the Board of Patent Appeals and Interferences 
from an adverse decision of the examiner. 
Further, a decision by the examiner adverse to a 
protestor is final, and under the restricted protestor 
participation permitted under 37 CFR 1.291(d) is 
not petitionable to the  Director.

==1907 Unauthorized Participation by Protestor==

Office personnel must exercise care to ensure that 
substantive matters relating to the application are not 
discussed ex parte with protestor or communicated in 
writing ex parte to protestor. The examiner must not 
communicate in any manner with protestor. See 
37 CFR 1.291(d).

==1920 Citation of Prior Art Under 37 CFR 1.501(a)==

37 CFR 1.501(a) permits any person at any time 
during the period of enforceability of a patent to cite 
to the Office, in writing, prior art consisting of patent 
and printed publications which that person states to be 
pertinent and applicable to the patent and believes to 
have a bearing on the patentability of any claim(s) of 
the patent. See MPEP § 2202 - § 2208.