Section 1901.05 Initial Office Handling and Acknowledgment of Protest


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.


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.


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.


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.