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)…
Read MoreCan an examiner require an applicant to respond to issues raised in a protest?
Yes, in certain circumstances, an examiner can require an applicant to respond to issues raised in a protest. According to MPEP 1901.06: “Where necessary or desirable to decide questions raised by the protest, under 37 CFR 1.291(f) the primary examiner can require the applicant to reply to the protest and answer specific questions raised by…
Read MoreIs an examiner’s decision adverse to a protestor final?
Yes, an examiner’s decision adverse to a protestor is final. MPEP § 1906 explicitly states that “a decision by the examiner adverse to a protestor is final.” This means that once an examiner has made a decision that goes against the protestor’s arguments, there are no further avenues for the protestor to challenge that decision…
Read MoreCan an examiner communicate with a protestor regarding a filed protest?
No, examiners are not permitted to communicate with protestors regarding filed protests. The MPEP 1901.06 clearly states: “The examiner must not communicate with protestor in any way even if the protest is incomplete or the protestor inquires as to the status of any Office proceedings related to the protest.“ This prohibition applies regardless of the…
Read MoreCan a protest be submitted anonymously?
Yes, a protest can be submitted anonymously. The MPEP 1901.04 states: “The name of the real party in interest need not be submitted as part of the protest.” This provision allows individuals or entities to submit protests without revealing their identity. However, it’s important to note that while the protest itself can be anonymous, any…
Read MoreWhat is a protest in patent examination?
A protest in patent examination is a mechanism that allows third parties to submit prior art or other information relevant to the patentability of a pending patent application. The process is outlined in MPEP Chapter 1900, which states: “The protest procedure permits members of the public to submit information to the Office for consideration in…
Read MoreWho is responsible for reviewing a reissue application when a protest is filed and the patent is in a contested case?
When a protest is filed in a reissue application and the related patent is involved in a contested case, the review process involves collaboration between several parties. According to MPEP 1449: “In consultation with the examiner and the PTAB, a TC TQAS or SPRS will check to see that: It is particularly important that the…
Read MoreWhat happens if a protest is filed in a reissue application related to a patent involved in a pending interference proceeding?
If a protest is filed in a reissue application related to a patent involved in a pending interference proceeding, the reissue application should be referred to the Patent Trial and Appeal Board (PTAB) before any action is taken. As stated in MPEP 1449: “If a protest (see MPEP Chapter 1900) is filed in a reissue…
Read MoreWhy is it important to refer a reissue application to the PTAB when a protest is filed and the patent is in an interference or contested case?
Referring a reissue application to the Patent Trial and Appeal Board (PTAB) when a protest is filed and the patent is in an interference or contested case is crucial for several reasons: It ensures coordination between the reissue examination process and the ongoing interference or contested case. It allows the PTAB to provide guidance on…
Read MoreWhat should an examiner do if a protest is filed against a reissue application?
When a protest is filed against a reissue application, the examiner should take the following steps: Determine if a protest has been filed. If a protest exists, handle it according to the procedures set forth in MPEP § 1901.06. Consider the specific guidelines for protests under 37 CFR 1.291 in reissue applications, as outlined in…
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