Can a protestor submit additional information after filing a protest?

This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.

Generally, a protestor’s active participation ends with the filing of the protest. The MPEP states:

“Active participation by protestor ends with the filing of the protest, as provided in 37 CFR 1.291(d), and no further submission on behalf of protestor will be acknowledged or considered, unless the submission is made pursuant to 37 CFR 1.291(c)(5).“

However, there is a limited exception under 37 CFR 1.291(c)(5) for submitting additional information. This requires:

• The new submission must be directed to significantly different issues than those raised in the earlier protest
• An explanation of how the issues are significantly different
• Why these different issues were not presented in the earlier protest
• Payment of a processing fee under 37 CFR 1.17(i)

Submissions that merely seek to participate in the examination process or provide additional comments on previously raised issues will not be entered into the application file.