1901.06 Office Treatment of Protest [R-10.2019]

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

Protests will not be automatically made of record in an application. The Office has designated points of contact and established procedures for reviewing protests to determine if they are compliant with the relevant provisions of 37 CFR 1.291 before being made of record in an application. These procedures permit compliant protests to be entered into the record of the application and made available to the examiner for consideration as early as possible.

If a compliant protest is filed in a reissue application and the reissue application is related to a patent involved in a pending interference or derivation proceeding, such application should be referred to the Office of Patent Legal Administration before the examiner considers the protest and acts on the application.

37 CFR 1.291(g) provides that a protest that fails to comply with 37 CFR 1.291(b) or (c) may not be entered. A protest that is non-compliant with some requirement of 37 CFR 1.291(b) or (c), may be entered into the record if the reviewer determines that the error is of such a minor character that, in the opinion of the Office, it does not raise an ambiguity as to the content of the protest. For example, if an error with respect to a requirement of 37 CFR 1.291(c) is of such a nature that the content of the protest can still be readily ascertained (e.g., a U.S. patent is identified by the correct patent number and issue date but the name of the first named inventor is clearly misspelled), the Office may have enough information to be able to enter the protest into the record despite the error. However, the determination of whether to enter or not to enter a protest that partially complies with a requirement of 37 CFR 1.291(b) or (c) will be made on a case-by-case basis and at the sole discretion of the Office (e.g., the Office may decline to enter a protest listing a U.S. patent whose patent number does not match Office records with respect to that patent number’s issue date and/or first named inventor). In any event, the Office will either enter or not enter the entire protest and will not attempt to enter portions of partially compliant protests, except as noted in the paragraph below.

In the unlikely event an examiner believes a protest is non-compliant, the examiner should immediately consult the reviewer of the protest or other appropriate Technology Center point of contact. If as a result of such consultation it is determined that the examiner should not consider a listed document, the examiner should strike through the document to indicate that the examiner did not consider either the document or its accompanying concise explanation. In some instances, the stricken document may be cited by the examiner on a form PTO-892.

II. PERIOD FOR COMMENTS BY APPLICANT

If the Office’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.

Form paragraph 19.01 can be used to offer applicant an opportunity to file comments on the protest.

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.

Form paragraph 19.02 can be used to require additional information from applicant regarding issues raised by the protest.

III. EXAMINER MUST NOT COMMUNICATE WITH PROTESTOR

The examiner must not communicate with protestor in any way even if the protest is incomplete or the protestor inquires as to the status of any Office proceedings related to the protest. See 37 CFR 1.291. In addition, the examiner 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. See 37 CFR 1.291(g).

IV. EXAMINER TREATMENT OF AN ENTERED PROTEST

If the protest has been reviewed and entered into the record of the application in time to permit consideration 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 that are appropriate for consideration by the primary examiner, and the information supplied as to the same.

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.

V. PROTEST FILED ON OR AFTER PUBLICATION OF THE APPLICATIONA.Without the Written Consent of Applicant

If a protest is submitted on or after the date the application is published under 37 CFR 1.211 and is not accompanied by the written consent of the applicant, it will not be entered in the application file.

B.With the Written Consent of Applicant

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 a protest after publication of a patent application, 37 CFR 1.291(b)(1) requires that the protest be accompanied by the written consent of the applicant and be filed prior to the date the notice of allowance under 37 CFR 1.311 is given or mailed. 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 26^th); 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) 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. 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, except for issues related to inequitable conduct. The examiner will not, under any circumstances, treat or discuss those arguments or points directed to “fraud,” “violation of duty of disclosure,” or other inequitable conduct issues. See 37 CFR 1.291(e). While it is not necessary for the examiner to respond to each and every minute argument or point, the major arguments and points, except those concerning inequitable conduct, must be specifically covered.

VII. 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.