A protest pursuant to 37 CFR 1.291 may be filed throughout the pendency of a reissue application, before the date of mailing of a notice of allowance, subject to the timing constraints of the examination, as set forth in MPEP § 1901.04. While a reissue application is not published under 37 CFR 1.211, the reissue application is published pursuant to 35 U.S.C. 122(b)(1)(A) via an announcement in the Official Gazette (and public availability of the file contents) per 37 CFR 1.11(b). Such a publication does not preclude the filing of a protest. 35 U.S.C. 122(c) states:
(c) PROTEST AND PRE-ISSUANCE OPPOSITION- The Director shall establish appropriate procedures to ensure that no protest or other form of pre-issuance opposition to the grant of a patent on an application may be initiated after publication of the application without the express written consent of the applicant.[Emphasis added.]
A protest is precluded after publication for an application for an original patent, as a “form of pre-issuance opposition.” A reissue application is a post-issuance proceeding. A protest filed in a reissue application is not a “form of pre-issuance opposition to the grant of a patent” because the patent to be reissued has already been granted. Thus, the prohibition against the filing of a protest after publication of an application under 35 U.S.C. 122(c) is not applicable to a reissue application and a protest is permitted after publication of the reissue application.
Because a reissue application is a post-issuance proceeding, a pre-issuance submission under 35 U.S.C. 122(e) is not permitted to be filed in a reissue application; 35 U.S.C. 122(e) is limited to pre-issuance submissions by third parties in patent applications. Third parties who have a need to submit information in a reissue application are advised to avail themselves of the protest provisions of 37 CFR 1.291. Further, where a third-party submission is directed to a reissue application and would otherwise be compliant under 37 CFR 1.290, the Office will enter the submission into the record of the reissue application as a protest under 37 CFR 1.291.
II. TIME PERIOD FOR FILING PROTEST
A protest with regard to a reissue application should be filed within the 2-month period following the announcement of the filing of the reissue application in the Official Gazette. A potential protestor should be aware that reissue applications are taken up “special” and a protest filed outside the 2-month delay period may be received after action by the examiner. Further, if a protest is filed after a final rejection has been issued or prosecution on the merits has been otherwise closed for the reissue application, a petition for entry of the protest under 37 CFR 1.182 is required. The petition must include an explanation as to why the additional time was necessary and the nature of the protest intended. 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. A protest not filed prior to the date a notice of allowance under 37 CFR 1.311 is given or mailed will not be entered.
If the protest of a reissue application cannot be filed within the 2-month delay period, the protestor may petition to request (A) an extension of the 2-month period following the announcement in the Official Gazette, and (B) a delay of the examination until the extended period expires. Such a request 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 before the expiration of the 2-month period following the announcement of the filing of the reissue application in the Official Gazette. The petition must explain why the additional time is necessary and the nature of the protest intended. A copy of the 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.
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 reissue application. Protestors should be aware that the Office will entertain petitions from the reissue applicants under 37 CFR 1.182 to waive the 2-month delay period in appropriate circumstances. Accordingly, protestors to reissue applications cannot automatically assume that the full 2-month delay period will always be available.
The publication of a notice of a reissue application in the Official Gazette should be done prior to any examination of the reissue application. If an inadvertent failure to publish notice of the filing of the reissue application in the Official Gazette is recognized later in the examination, action should be taken to have the notice published as quickly as possible, and further action on the reissue application may be delayed until 2 months after the publication, allowing for any protests to be filed.
See MPEP § 1901.06 for general procedures on examiner treatment of protests in reissue applications.