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
Any information that can provide a showing against patentability of a pending application can be presented. MPEP Section 1901.02 states, “Any information which, in the protestor’s opinion, would make the grant of a patent improper can be relied on in a protest… . Protests may be based on any facts or information adverse to patentability. The content and substance of the protest are more important than whether prior art documents, or some other form of evidence adverse to patentability, are being relied on.”
How to file a protest
MPEP Section 1901.03 identifies the requirements to file a protest. To summarize the requirements, the protest must be filed using a document titled, “PROTEST UNDER 37 CFR 1.291” and should identify the application number, when possible. If available, the protest should also identify name of the applicant, filing date, title of the invention, group unit, name of the examiner, and/or current status and location of the application.
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).
Service of the protest
The protestor should “serve a copy of the protest upon the attorney or agent of record or upon the applicant if no attorney or agent is of record,” and should include a copy of all evidence submitted to the patent office. “The protest filed in the Office should reflect, by an appropriate “Certificate of Service,” that service has been made as provided in 37 CFR 1.291( b). Only in those instances where service is not possible should the protest be filed in duplicate in order that the Office can attempt service. ” Id.
Once the protest has been filed and properly served, active participation of the protestor ends. The USPTO will not communicate with the protestor or provide a disposition or status to the protestor. The patent office or the patent applicant are not required to communicate with the protestor. “Furthermore, a protestor is not permitted to participate in interviews, appeal a decision by the examiner adverse to the protestor to the Board of Patent Appeals and Interferences, or participate in an appeal by applicant.” MPEP Section 1901.07.
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
Unless consented by the patent applicant, a protest must be filed prior to the date the application was published under 37 CFR 1.211 or the mailing of a notice of allowance under 37 CFR 1.311–whichever occurs first. This means, the application must be pending when the protest is filed to ensure consideration by the examiner.
What if the application number of the pending application is not known?
Since the protest must be filed prior to the publication of the application, the application number would be publicly known. Thus, a protest must be filed soon after the protestor becomes aware of the existence of the offending patent application. MPEP Section 1901.04.
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 https://www.clfip.com on October 21, 2019.