1901.03 How Protest Is Submitted [R-10.2019]

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 an information list of all documents, portions of documents, or other information submitted; a concise explanation of the relevance of each listed item; an English language translation of any non-English language document or other information identified in the information list; and be accompanied by a copy of each item in the information list except for U.S. patents and U.S. patent application publications. 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 information list 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. 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.

Each protest should be clearly identified as a “PROTEST UNDER 37 CFR 1.291.” It is also 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 first page of the protest:

• (A) Name of inventor(s)
• (B) Name of applicant(s).
• (C) Application number.
• (D) Filing date of application.
• (E) Title of invention.
• (F) Art unit number (if known).
• (G) Name of examiner to whom the application is assigned (if known).

In addition to the above information, 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 Mail Stop Petition, Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450. A protest must NOT be submitted electronically via EFS-Web.

If the protestor is unable to specifically identify the application to which the protest is directed by application number, 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 conspicuously marked with the words “REISSUE LITIGATION.” 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.

I. A 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. A protest not accompanied by a copy of each document relied on (except for U.S. patents and U.S. patent application publications) will not be entered. 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 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).

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. 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.

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 protest will not be entered. If the protest is filed in duplicate and otherwise compliant, the Office will forward the protest to the correspondence address of record, and 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 application file history.