How does an examiner treat an entered protest during patent examination?

When a protest has been entered into the record of a patent application, the examiner must consider it during prosecution. According to MPEP 1901.06, the examiner must:

• Consider each prior art or other document submitted in conformance with 37 CFR 1.291(c) and any discussion of such documents in the protest.
• Consider any non-prior art issue(s) raised by the protest that are appropriate for consideration by the primary examiner.
• Make of record at least those prior art documents which the examiner relies on in rejecting claims, using form PTO-892 or by initialing the citations on form PTO/SB/08A and 08B if provided by the protestor.
• Indicate in the next Office action that all documents submitted have been considered.

The MPEP states: “The examiner must give careful consideration to the points and arguments made on behalf of the protestor.” However, the examiner will not treat or discuss arguments related to “fraud,” “violation of duty of disclosure,” or other inequitable conduct issues.

To learn more:

• protest
• patent examination
• examiner consideration