Protests (MPEP 1900)

by patentbar on November 29, 2007 · 4 comments

in MPEP 1900

Protests are made by member of public who thinks granting patent would be improper. Protests may be filed against a pending application or reissue and must specifically 1) identify application # or serial #, 2) contain a listing a evidence, 3) explain relevance of each evidence, 4) include a copy of each evidence (in English), and 5) provide certificate of service or duplicate copies to PTO.

Timing

  • Must be prior to first of either: 1) mailing of Notice of Allowance or 2) 18 month publication date
  • Within 2 months of announcement of filing of reissue application in OG (extension of time available)
  • If after final Notice of Allowance or publication, service to applicant is all that can be done; PTO discards it

Protestor’s Rights

  • One chance to submit protest
  • Cannot participate in prosecution process after filing protest
  • Cannot file additional papers unless they could not have been filed earlier
  • Applicant typically has 1 month to reply if requested by examiner

{ 4 comments… read them below or add one }

1 JMNo Gravatar January 19, 2012 at 4:16 pm

I am taking exam tomorrow so hopefully I am well-prepared.
Not sure if chapter 1900 is addressed by the new America Invents Act, but doesn’t it seem a little wierd that no protests are considered after publication of the patent application? Or am I reading it wrong. If I am a member of the public, how would I know about an application in the first place that would need to be protested, if in fact the applications are held in confidence (37 CFR 1.14) until publication?

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2 JNo Gravatar June 24, 2012 at 1:09 pm

I have the same question….anyone?

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3 mimiNo Gravatar October 26, 2012 at 1:15 am

If you want to provide an infomation against an application by another,
you can do “Third-party submission” or “Prodest” to a pending application. And, you can do “Request of Reexamination” to a patent.
Third-party submission is useful for public since the time limit is 2 month after publication.
Protest is useful for real real party in inerest since the time limit is before publication(if the pending application is a reissue, the document is open to public. so if you are real party in interest, you need to be interested with a competitor’s patent).

I think, protest is likely a previous step toward a litigation.
And, I think that protest is often occurred in Reissue, concerning something like infringement. TP submission is occurred in real pending application in purpose of information providing.

This is my understanding…..

4 mimiNo Gravatar October 27, 2012 at 5:29 am

And, if protest is filed along with the consent of the applicant, time limit requirement of protest will be precluded from requirements of protest(even if protest is filed after publication of the issued applicationt.

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