Protests: Are Those Still Around?

In the wake of third-party or pre-issuance submissions with the enactment and implementation of AIA, protests often get overlooked.  But, a protest submission is still a filing option.

Protests are supported statutorily under 35 U.S.C. § 122(c) and in the CFR under Section 1.291.  And, can be found in the M.P.E.P. in Chapter 1900.  A protest can be filed by any member of the public (e.g., private person, corporate entity, government agency, or attorney) against a pending patent application.  Any information which would make the grant of a patent improper can be relied upon in a protest. 

Types of information for submission in a protest include public use or on sale, inventorship, patentability challenge, and/or “fraud” or “duty of disclosure” information.  That type of information will take different forms and may raise issues of authentication and the probative value to assign to such information.  That, however, does not preclude the USPTO from considering such evidence.  Information often submitted in protests include litigation-related materials such as complaints, answers, deposition transcripts, interrogatories, etc.

With the submission of the information for the Office’s consideration, one must also include a concise explanation of the relevance of each item.  Additionally, a legible copy must be included, if the item is not a patent or patent application publication.  If the item submitted is not submitted in English, a translation is necessary.  There is no cost for the first protest submission.  Additional submissions, by the same party in interest, must include an explanation why the issues in the additional protest are significantly different from the first and why the issues were not raised earlier.  A processing fee is also applicable with the second or subsequent protest submission.

A factor weighing on a submission of a protest is timing.  A protest must be served and filed prior to the date the application is published or the date a notice of allowance is given or mailed, whichever occurs first.  The only exception to this is if one obtains consent of the applicant, a protest may be filed during prosecution of the application.  Otherwise, for all practical purposes, a protest must be filed before publication.

The timing requirement of a protest begs the question:  how does one know about an application before it gets published?  Example instances where one would know about an application without it publishing include in continuation/divisional applications, in national stage entry applications after PCT publication or a published foreign application, and/or where an inventor was left-off.  This timing requirement can curtail a protest submission.

Other considerations to keep in mind with protests include:

• Third party involvement ends with the submission of a protest;
• Instances where inequitable conduct is raised and the submission is compliant, the submission likely will be entered without comment; and
• There is no requirement for applicant to reply to protest.

Protests (unlike preissuance submissions) can be filed in reissue applications but with some slight differences.  A protest can be filed in a reissue application throughout the pendency prior to the mail date of the Notice of Allowance.  Timing is ideally within two months following the announcement in the Official Gazette.