Any information which, in the protestor’s opinion, would make the grant of a patent improper can be relied on in a protest under 37 CFR 1.291. While prior art documents, such as patents and publications, are most often the types of information relied on in protests, 37 CFR 1.291 is not limited to prior art documents. Protests may be based on any facts or information adverse to patentability. The content and substance of the protest are more important than whether prior art documents, or some other form of evidence adverse to patentability, are being relied on. The Office recognizes that when evidence other than prior art documents is relied on, problems may arise as to authentication and the probative value to assign to such evidence. However, the fact that such problems may arise, and have to be resolved, does not preclude the Office from considering such evidence, nor does it mean that such evidence cannot be relied on in a protest under 37 CFR 1.291. Information in a protest should be set forth in the manner required by 37 CFR 1.291(c).
The following are examples of the kinds of information, in addition to prior art documents, which can be relied on in a protest under 37 CFR 1.291:
- (A) Information demonstrating that the invention was publicly known or used by others and is barred from patenting under 35 U.S.C. 102(a)(1) and/or 103 or pre-AIA 35 U.S.C. 102(a) and/or 103.
- (B) Information that the invention was in public use or on sale and is barred from patenting under 35 U.S.C. 102(a)(1) or pre-AIA 35 U.S.C. 102(b).
- (C) Information that the inventor “has abandoned the invention” (pre-AIA 35 U.S.C. 102(c)) or “did not himself invent the subject matter sought to be patented” (35 U.S.C. 101 and/or pre-AIA 35 U.S.C. 102(f)).
- (D) Information relating to inventorship under pre-AIA 35 U.S.C. 102(g).
- (E) Information relating to compliance with 35 U.S.C. 112.
- (F) Any other information demonstrating that the application lacks compliance with the statutory requirements for patentability.
- (G) Information indicating “fraud” or “violation of the duty of disclosure” under 37 CFR 1.56 may be the subject of a protest under 37 CFR 1.291. Protests raising fraud or other inequitable conduct issues will be entered in the application file, generally without comment on those issues. 37 CFR 1.291(e). See MPEP § 2013.
Different forms of evidence may accompany, or be submitted as a part of, a protest under 37 CFR 1.291. Conventional prior art documents such as patents and publications are the most common form of evidence. However, other forms of evidence can likewise be submitted. Some representative examples of other forms of evidence are litigation-related materials such as complaints, answers, depositions, answers to interrogatories, exhibits, transcripts of hearings or trials, court orders and opinions, stipulations of the parties, etc. Where only a portion of the litigation-related materials is relevant to the protest, protestors are encouraged to submit only the relevant portion(s).
In a protest based on an alleged public use or sale, evidence of such public use or sale may be submitted along with affidavits or declarations identifying the source(s) of the evidence and explaining its relevance and meaning. Such evidence might include documents containing offers for sale, orders, invoices, receipts, delivery schedules, etc. The Office will make a decision as to whether or not public use or sale has been established based on the evidence the Office has available.
While the forms in which evidence and/or information may be submitted with, or as a part of, a protest under 37 CFR 1.291, are not limited, protestors must recognize that such submissions may encounter problems such as establishing authenticity and/or the probative value to apply to the evidence. Obviously, the Office will have to evaluate each item of evidence and/or information submitted with a view as to both its authenticity and what weight to give thereto.
Information which is subject to a court-imposed protective or secrecy order may be submitted with, or as a part of, a protest under 37 CFR 1.291. Trade secret information which was obtained by a protestor through agreements with others can likewise be submitted. Such information, if submitted in accordance with MPEP § 724, will be treated as set forth therein and will be made public if a reasonable examiner would consider the information important in deciding whether to allow the application to issue as a patent. To ensure that the Office recognizes the protected/secret material, the protestor should follow the procedures in MPEP § 724.