1901.07 Protestor Participation [R-3]

37 CFR 1.291 does not permit protestor, or any other member of the public, to contact or receive information from the Office as to the disposition or status of the protest, or the application to which it is directed, or to participate in any Office proceedings relating to the protest. The Office does not serve copies of Office actions or other documents mailed by the Office on protestors, and does not require applicants to serve copies of papers filed with the Office on protestors. 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. The disposition of the protest will be an ex parte matter between the Office and the applicant. Where protestor has access to an application, for example, a reissue application which is open to the public and may be inspected under 37 CFR 1.11, the proceedings may thereby be monitored.

Under 37 CFR 1.291( f), applicant may be required by the Office to reply to a protest. Any reply thereto would be ex parte and would not be served on the protestor.

1901.07(a) Filing of Multiple Papers Relating to Same Issues [R-3]

Under 37 CFR 1.291( d), protestor participation ends with the filing of the initial protest, and protestor will not be allowed to complete any protest that is incomplete. Effective November 22, 2004, 37 CFR 1.291 (c) was amended to no longer permit the submission of additional (cumulative) prior art by the same real party in interest. Multiple piecemeal protests (raising a slightly different issue in each protest submission) in a single application by the same real party in interest are not permitted. After the filing of the initial protest, no further submission of prior art by the same real party in interest will be considered, except for new, non-cumulative prior art submitted under the conditions of 37 CFR 1.291 (c)(5). 37 CFR 1.291 (c)(5) requires that a second or subsequent protest by the same real party in interest include:

(A) an explanation as to why the issue(s) raised in the second or subsequent protest are significantly different than those raised earlier;

(B) an explanation as to why the significantly different issue(s) were not earlier presented; and

Significantly different issue(s) may be raised by the submission of new, non-cumulative prior art or other information not previously made of record. Additional comments seeking to bring in further or even new data or information with respect to an issue previously raised by the same real party in interest would not qualify as a significantly different issue. By imposing requirements for second or subsequent protests on "the same real party in interest," the requirements of 37 CFR 1.291 (c)(5) cannot be avoided by multiple protests submitted by different people representing the same real party in interest.

Second or subsequent protest by the same real party in interest that do not comply with 37 CFR 1.291 (c)(5) will not be entered in the intended application and will be returned to the protestor, or discarded, at the option of the Office. 37 CFR 1.291 (g).

An examiner will consider a second or subsequent protest filed on behalf of the same real party in interest (subject to the time frames set forth in 37 CFR 1.291 (b), the caveat that the protest can be timely matched and considered prior to the issuance of the patent, and the content requirements of 37 CFR 1.291 (c)(1) to (4)), if the second or subsequent protest complies with 37 CFR 1.291 (c)(5).