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
{ 1 comment… read it below or add one }
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?