Filing A Patent Protest With the USPTO

Photo by Warren Wong on Unsplash

Often times an individual or company may want to challenge the issuance of a patent to another entity. This could be due to many reasons, e.g., inventor not named by company, incorrect claim of inventorship, fraud, inequitable conduct, violation of duty of disclosure, prior art documents, etc. The USPTO provides a mechanism to file a protest to a pending application under 37 CFR 1.291. “Any member of the public, including private persons, corporate entities, and government agencies, may file a protest… .” MPEP Section 1901.01.

Information needed to file a protest

How to file a protest

The protest must include all the evidence the protestor has relied on, including, prior art document, court litigation material, affidavit, or declaration, etc.. This is important because all the information submitted by the protestor is filed ex parte, and the “protestor will not be given an opportunity to supplement or complete any protest which is incomplete.” Id.

The protest must include the following information:

(A) a listing of the patents, publications, or other information relied on;

(B) a concise explanation of the relevance of each listed item;

(C) a copy of each listed patent, publication, or other item of information in written form, or at least the pertinent portions thereof;

(D) an English language translation of all necessary and pertinent parts of any non-English language patent, publication, or other information relied upon; and

(E) if the protest is a second or subsequent protest by the same real party in interest, the protest must further include:(1) an explanation as to why the issue(s) being raised in the second or subsequent protest are significantly different than those raised earlier;(2) an explanation as to why the significantly different issue(s) were not presented to the Office earlier; and (3) the processing fee under 37 CFR 1.17(i).

MPEP Section 1901.

Service of the protest

Protestor’s participation

However, “[t]he degree of participation allowed a protestor is solely within the discretion of the Director of the USPTO.” MPEP Section 1901.

When to file a protest

What if the application number of the pending application is not known?

The protest should include any information the party is aware of that would facilitate identification of the application and matching the protest with the application. If not enough information is provided, the protest may not be matched at all or not timely matched with the intended application to permit review by the examiner during prosecution of the application. In such a case, the protest may not be entered. MPEP Section 1901.

A protest filed after final rejection is only considered if the application is still pending when the protest and application are provided to the examiner. Section 1901.04.

Originally published at on October 21, 2019.

Patent & Defamation Attorney

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