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1901.07 Protestor Participation - 1900 Protest
1901.07 Protestor Participation
In accordance with the limited protestor participation in protests, 37 CFR 1.291(c) was amended effective July 1, 1982, and further amended on December 1, 1997, to provide that:
"limited involvement of the member of the public filing a protest . . . 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."
37 CFR 1.291(c) was amended effective December 1, 1997, by removing the blanket limitation of one protest per protestor, and now provides for a second or subsequent submission in the form of additional prior art. However, mere argument that is later submitted by an initial protestor would not be entered and would be returned unless it is shown that the argument relates to a new issue that could not have been earlier raised. Prior art submitted by a previous protestor prior to the publication of the application or the mailing of the notice of allowance under 37 CFR 1.311, whichever occurs first, will be made of record without a showing that it relates to a new issue. However, it should be noted that entry of later submitted prior art in the file record does not assure its consideration by the examiner if submitted late in the examination process. See MPEP § 1901 and § 1901.04. Accordingly, initial protests should be as complete as possible when first filed. The mere filing of a protest does not grant access to protestor or relieve the Office of its obligations under 35 U.S.C. 122 to maintain applications "in confidence." Nor does the mere filing of a protest automatically mean that protestor will have any "right" to participate to any particular degree. 37 CFR 1.291(c) 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, once it has been filed under paragraph (c), 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(c), 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. The ex parte nature of the requirements for information under paragraph (c) differs from past practice under which information could be required, or requested, from applicant and one or more protestors.
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