37 C.F.R. § 1.291

Protests by the public against pending applications

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(a) A protest may be filed by a member of the public against a pending application, and it will be matched with the application file if it adequately identifies the patent application. A protest submitted within the time frame of paragraph (b) of this section, which is not matched, or not matched in a timely manner to permit review by the examiner during prosecution, due to inadequate identification, may not be entered and may be returned to the protestor where practical, or, if return is not practical, discarded.

(b) The protest will be entered into the record of the application if, in addition to complying with paragraph (c) of this section, the protest has been served upon the applicant in accordance with § 1.248, or filed with the Office in duplicate in the event service is not possible; and, except for paragraph (b)(1) of this section, the protest was filed prior to the date the application was published under § 1.211, or the date a notice of allowance under § 1.311 was given or mailed, whichever occurs first:

(1) If a protest is accompanied by the written consent of the applicant, the protest will be considered if the protest is filed prior to the date a notice of allowance under § 1.311 is given or mailed in the application.

(2) A statement must accompany a protest that it is the first protest submitted in the application by the real party in interest who is submitting the protest; or the protest must comply with paragraph (c)(5) of this section. This section does not apply to the first protest filed in an application.

(1) An information list of the documents, portions of documents, or other information being submitted, where each:

(i) U.S. patent is identified by patent number, first named inventor, and issue date;

(ii) U.S. patent application publication is identified by patent application publication number, first named inventor, and publication date;

(iii) Foreign patent or published foreign patent application is identified by the country or patent office that issued the patent or published the application; an appropriate document number; the applicant, patentee, or first named inventor; and the publication date indicated on the patent or published application;

(iv) Non-patent publication is identified by author (if any), title, pages being submitted, publication date, and, where available, publisher and place of publication; and

(v) Item of other information is identified by date, if known.

(2) A concise explanation of the relevance of each item identified in the information list pursuant to paragraph (c)(1) of this section;

(3) A legible copy of each item identified in the information list, other than U.S. patents and U.S. patent application publications;

(4) An English language translation of any non-English language item identified in the information list; and

(5) If it is a second or subsequent protest by the same real party in interest, an explanation as to why the issue(s) raised in the second or subsequent protest are significantly different than those raised earlier and why the significantly different issue(s) were not presented earlier, and a processing fee under § 1.17(i) must be submitted.

(d) A member of the public filing a protest in an application under this section will not receive any communication from the Office relating to the protest, other than the return of a self-addressed postcard which the member of the public may include with the protest in order to receive an acknowledgment by the Office that the protest has been received. The limited involvement of the member of the public filing a protest pursuant to this section ends with the filing of the protest, and no further submission on behalf of the protestor will be considered, unless the submission is made pursuant to paragraph (c)(5) of this section.

(e) Where a protest raising inequitable conduct issues satisfies the provisions of this section for entry, it will be entered into the application file, generally without comment on the inequitable conduct issues raised in it.

(f) In the absence of a request by the Office, an applicant need not reply to a protest.

(g) Protests that fail to comply with paragraphs (b) or (c) of this section may not be entered, and if not entered, will be returned to the protestor, or discarded, at the option of the Office.

[69 FR 56544, Sept. 21, 2004, as amended at 77 FR 42173, July 17, 2012]

Notes of Decisions

Cited in 45 cases (1 in the last 5 years), 1977–2025 · leading case: North American Container, Inc. v. Plastipak Packaging, Inc.

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North American Container, Inc. v. Plastipak Packaging, Inc. (2005) cafc “” Protests were filed under 37 C.F.R. § 1.291 (a) by manufacturers and distributors of bottles against the newly added claims, alleging violation of the recapture rule on the ground that “subject matter which the reissue applicant has intentionally removed from the reissue…”

Juicy Whip, Inc. v. Orange Bang, Inc., Unique Beverage Dispensers, Inc., David Fox, and Bruce Burwick (2002) cafc “” After the Bowers declaration was filed, Coca-Cola, despite its earlier business relationship with Juicy Whip, filed a protest before the PTO under 37 C.F.R. § 1.291 (a) against the issuance of the '405 patent.”

Truswal Systems Corp. v. Hydro-Air Engineering, Inc. (1987) cafc “Though Hydro-Air had protested issuance of the '807 patent in the Patent and Trademark Office under 37 C.F.R. § 1.291 , it neither intervened in the Florida action nor sought a declaratory judgment in any court.”

Rohm & Haas Co. v. Mobil Oil Corp. (1981) ded · cites it 2× “37 C.F.R. § 1.291 ; 42 Fed.Reg. 5589 (Jan.”

Litton Systems, Inc. v. Honeywell, Inc. (1998) cafc “In October 1985, one of Litton’s competitors filed a protest under 37 C.F.R. § 1.291 (1985). The protest highlighted two references: (1) an article by W.”

In Re Jeffrey M. Sullivan and Daniel Anthony Gately (2004) cafc “Finding that “there is little justification in continuing the interference to develop fully issues that can be administered more efficiently in an examination,” the Board recommended that the Examiner consider the patentability issues raised in Sullivan’s preliminary motions.”

In Re James A. Smith and James H. McLaughlin and Sterling Drug, Inc., Intervenor (1983) cafc “The role of the protestor is defined by 37 C.F.R. § 1.291 (1979) and Ch. 19 Manual of Patent Examining Procedure (4th ed.”

Hitachi Metals, Ltd. v. Quigg (1991) dcd · cites it 4× “37 C.F.R. § 1.291 . 11 This PTO regulation implementing the Patent Statute’s intent to limit third-party involvement in the patent examination process is entitled to judicial deference.”

Pic Inc. v. Prescon Corp. (1980) ded · cites it 2× “18 Lang’s request for expedited consideration of his claims was granted by the Assistant Commissioner (A 73), and Prescon was given the opportunity to file a protest under 37 C.F.R. § 1.291 . In so doing, the Assistant Commissioner stated, “[i]t is recognized, of course, that…”

Baker Perkins, Inc., Appellant-Petitioner v. Werner & Pfleiderer Corporation, Appellee-Respondent (1983) cafc “37 CFR 1.291 (1982). On April 14, 1982, Baker Perkins expressly abandoned the first reissue application in favor of a continuing reissue application Serial No.”

Dow Chemical Co. v. Exxon Corp. (1998) ded · cites it 3× “In response, on June 27,1995, Exxon filed a protest under 37 C.F.R. § 1.291 (a) against the ’631 reissue application, arguing that the claims of the ’631 reissue application should be rejected on the basis of the arguments made in the ’404 interference and the APJ’s…”

In Re Mark Industries (1984) cafc “Calavar claimed prejudice because, if it had received direct notice, it would have filed a protest in the PTO pursuant to 37 CFR § 1.291 (1981). MARK denied the existence of any such “custom”, denied knowledge thereof (if it existed), and cited 37 CFR 1.”

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