Anticipate This!™ | Patent and Trademark Law Blog

Methinks Thou Doth Protest Too Little: Providing Relevant References to the USPTO.

Posted in Practice Commentary by Mike Dockins on March 3, 2009

How many patent practitioners are aware of the various methods of submitting art to the USPTO that may invalidate a patent or result in §102 or §103 rejections of pending applications?  Many are aware, of course, of the methods of bringing new art to the USPTO’s attention with respect to issued patents, for example:  Ex Parte Reexaminations (see MPEP 2200 et seq.); and Inter Partes Reexaminations (see MPEP 2600 et seq.).

The relative successes of Ex Parte Reexamination and Inter Partes Reexaminations are well documented.  In fact, we documented one recent study here.

But what about submitting art during the prosecution of pending applications?  There are at least two methods of submitting art during the prosecution of patent applications that may be employed, namely:  Protests (see 37 CFR 1.291; MPEP 1900 et seq.); and Third Party Submissions (see 37 CFR 1.99; MPEP 1134-1134.01).  While statistical data regarding the frequency of Protest and Third Party Submission filings was not readily located, the following is some general information concerning these strategies.

Protests under 37 CFR 1.291

A Protest may be filed by any member of the public against a pending application. The Protest should include a listing of patents, publications, or other information that is relevant and may prove useful during the prosecution of the pending application. A concise explanation of the relevance of each piece of art should also be provided. A copy of each listed patent, publication, or other item of information should be provided with the Protest. If the art cited in the Protest is not in English, an English language translation should be provided. A Protest may also raise inequitable conduct by an Applicant. If the information regarding the conduct complies with MPEP 1900 et seq., the information will be entered into the application file, generally without comment on the inequitable conduct issues raised.

How much does a Protest cost?

Shockingly, the first Protest filed for a pending application does not require the payment of a fee.  Subsequent Protests must be submitted with a process fee pursuant to 37 CFR 1.17(i).

As many Protests as desired may be filed, subject to a few provisions. A statement must accompany a Protest that it is the first Protest submitted in the application by the real party in interest who is submitting the Protest. If a second or subsequent Protest is filed by the same party in interest, an explanation is required as to why the issue(s) raised in the second or subsequent protest are significantly different than those raised earlier, and why the significantly different issue(s) were not presented earlier.

Is a Protest Ex Parte or Inter Partes?

A Protestor receives no communication from the USPTO relating to the Protest, other than the return of a self-addressed postcard included with the Protest. Absent a subsequently filed Protest, no further submission by the Protestor will be considered.

The Protest must be served upon the Applicant in accordance with 37 CFR 1.248 or filed with the USPTO in duplicate in the event service is not possible. 37 CFR 1.248 requires that service must be made on the attorney or agent of the Applicant, or the Applicant if there is no attorney or agent.

What happens if a Protest does not comply with the Patent Rules?

Protests that fail to comply with the Patent Rules will not be entered into the patent file. If the Protest is not entered it may returned to the Protestor or discarded at the option of the USPTO.

When must a Protest be filed?

The Protest must be submitted prior to the date the application was published under 37 CFR 1.211 or a notice of allowance was mailed under 37 CFR 1.311, whichever occurs first. So how would a potential Protestor know of an application to Protest it? A Protestor may have “inside” knowledge of an unpublished, pending application. Or the Applicant may be selling the invention disclosed in the patent application prior to publication. Most likely, however, a Protestor has learned of a pending U.S. application by diligently searching published WIPO publications designating the U.S. that has not yet been published in the U.S.

What happens if it is too late to file a Protest?

That is, when should a patent practitioner consider filing a Third Party Submission under 37 CFR 1.99?   More on Third Party Submissions in a later post . . . .

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