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.