Q) Protest (10.02.46p)

by Lizzie on April 28, 2009 · 9 comments

in Exam Concepts, Exam Questions

 

46. Which of the following statements does not accord with proper USPTO practice and procedure?

(A) A protest may be filed by an attorney or other representative on behalf of an unnamed principal.

(B) Information which may be relied on in a protest includes information indicating violation of the duty of disclosure under 37 CFR 1.56.

(C) While a protest must be complete and contain a copy of every document relied on by the protestor, a protest without copies of prior art documents will not necessarily be ignored.

(D) A protest must be submitted prior to the date the application was published or the mailing of a notice of allowance, whichever occurs later, provided the application is pending.

(E) Since a protestor is not authorized to participate in the prosecution of a pending application, the examiner must not communicate in any manner with the protestor.

 

46. ANSWER: (D) is the best answer. MPEP § 1901.04. (A) is a true statement. MPEP § 1901.01. (B) is a true statement. MPEP § 1901.02, paragraph (G). (C) is a true statement. MPEP § 1901.03. (E) is a true statement. MPEP § 1907.

{ 9 comments… read them below or add one }

1 sgwNo Gravatar July 13, 2011 at 2:59 am

I got similar on 6/2.

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2 maggieNo Gravatar November 15, 2011 at 7:27 pm

(1) Third party question issuance of pending application ..BEFORE publication or allowance which ever is earlier
(2) No Fee
(3) Submitted the proof with comments of relevance
(4) Served upon applicant
(5) To any statutory requirement to patentability 102,103 101 or 112 Must be complete (references + comments)
(5) can not file multiple protest
(6) Attorney can file without naming client

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3 SecondTryNo Gravatar February 7, 2012 at 2:40 pm

I failed last week and will try again. I had a new Protest question I still have a question about — what is the definition of “same real party in interest” from 1901.01 and 1901.07? I had a question as follows:

Smith already submitted the protest claim for one issue. Can he submit the second protest claim? Or can William, a different person who does not know Smith, submit the protest claim for the same issue?

Based on my reading on 1901.01 and 1901.07, it seems like Smith can or cannot submit the second protest claim depending on whether the second claim is significantly different from his first claim. But what about William? Can he submit the protest claim (probably subsequent claim) for the same issue? Is he a same real party in interest?

I just cannot figure out the meaning of “same real party in interest.”

If you have any idea about the meaning of the following sentence, please let me know.

1901.07
“By imposing requirements for second or subsequent pro¬tests on “the same real party in interest,” the require¬ments of 37 CFR 1.291(c)(5) cannot be avoided by multiple protests submitted by different people repre¬senting the same real party in interest.”

So, in this case, is William a different people representing the same real party in interest?

Thanks.

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4 GDBNo Gravatar April 15, 2012 at 3:00 pm

See answer below

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5 Juris PrudenceNo Gravatar February 7, 2012 at 9:20 pm

Real party of interest (the inventor/applicant/assignee)

(from the 1200 section in Study guide, this website)

Perhaps the difference between “In” and “of” is not relevant?

JP

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6 KFNo Gravatar March 17, 2012 at 5:46 pm

This explanation leaves a lot to be desired. D is NOT in accordance with the MPEP because it is whichever occures FIRST (not last as the answer choice states). Took me forever to figure that out. From 1901.04

…”aunder 37 CFR 1.211< or the mailing of a notice of allowance under 37 CFR 1.311, whichever occurs FIRST, and the application must be pending when the protest and application file are brought…"

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7 GDBNo Gravatar April 15, 2012 at 2:59 pm

Secondtry -

I think that Smith can submit a second protest if it is for a substantially different issue. He cannot submit a second protest if it is for the same issue and he is simply trying to introduce additional evidence in support of that first issue.

William will be able to submit a protest for the same issue that Smith submitted his original protest if William does NOT represent Smith. If William represents Smith then William will be considered the “same real party in interest” as Smith and so cannot submit a protest which is the same (or not substantially different) from the first protest submitted by Smith.

The USPTO is just trying to avoid Smith getting round the prohibition of a second protest which is the same as his first protest by asking other people to submit protests on his behalf.

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8 GDBNo Gravatar April 15, 2012 at 3:00 pm

Secondtry –
Just to clarify. In your example, because William doesn’t know Smith he IS able to submit a protest which is the same as Smith’s protest.

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9 ZNo Gravatar March 31, 2013 at 1:36 pm

Got this 3/30/13.

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