Protest Procedures in the U.S.

In Europe, like many foreign countries, an opposition to a patent can be filed within a specified time period (e.g., within nine months after grant). Under an opposition proceeding, the application/patent is published and anyone who believes the invention is not patentable can cite additional prior art to the patent office to block issuance of the patent. Although the United States does not have a formal opposition period, the rules do provide a means for a third party to cite prior art against a pending application in an attempt to prevent issuance of a patent. In the U.S. this procedure is called a protest.

Under 37 CFR 1.291, any member of the public, including private persons, corporate entities, and government agencies may protest a specifically identified patent application. The principal member of the public may remain unnamed as an attorney or other representative on behalf of the unnamed principal may file the protest. Although the examiner must consider the filed protest with accompanying prior art documents, a number of conditions must first be met.

First, the protest must be submitted prior to the mailing of a notice of allowance. With regards to protesting re-issue applications, the protest should be filed within a period of 2 months following the announced filing of the re-issue application in the Official Gazette. Although a 2-month period is necessary due to the special nature of the re-issue application, a petition for extension of time may be filed if additional time is necessary. Protests relating to re-issue applications should be specifically identified with a bright colored felt point marker as “REISSUE LITIGATION.”

Second, the protest must either be served upon the applicant or an attorney representing the applicant. Every effort should be made by a protestor to 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. Only in those instances where service is not possible should the protest be filed in duplicate in order that the Office can attempt service. However, where the protestor does properly serve a complete copy of the protest, the protest filed in the Office should reflect proper service by an appropriate “Certification of Service.”

Third, the application, whether original or re-issue, must be still pending. Finally, the protest must also include: (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; and (d) an English language translation of all necessary and pertinent parts of any non-English language document relied on.

The participation rights of the protestor, however, are limited. According to 37 CFR 1.291(c), active participation by a protestor “ends with the filing of the protest, and no further submission on behalf of the protestor will be considered, except for additional prior art, or unless such submission raises new issues which could not have been earlier presented.” The protestor will not be given an opportunity to supplement or complete any protest that is incomplete. Thus, it is incumbent upon the protestor to file a complete initial protest. Although new protests are permissible, it must be clearly limited to a new issue that could not have been earlier presented.

The PTO will acknowledge the receipt of a protest in an original or a reissue application file only if a self-addressed postcard is included with the protest. The question of whether or not a patent will issue is a matter between the applicant and the Office acting on behalf of the public. Under 37 CFR 1.291(c), the Office will communicate with the applicant regarding any protest entered in an application file and may require the applicant supply information necessary or desirable to decide questions raised by the protest. In cases where it is necessary that the Office seek reasonable answers, the applicant will be offered a set period of 30 days or 1 month, whichever period is longer, to respond.

If the protester has followed the above-noted conditions, those prior art documents that the examiner relies on in rejecting claims will be made of record. The examiner will also indicate in the next Office action that all documents submitted have been considered.

Although the protest procedures in the U.S. allow limited third party participation during examination that ultimately may prevent the issuance of questionable patents, this procedure still has its limitations. A primary limitation results from the fact that certain U.S. applications are not published prior to issuance. An applicant who does not intend to file an application in a foreign patent office may request non-publication of its application, thereby preventing access to its application by third parties. Since unpublished applications rarely can be specifically identified, no protest can be filed prior to issuance.

© HASEEB R. JABBAR, 2003