Can an examiner require an applicant to respond to issues raised in 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.

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 the protest.“

However, there are limitations:

• The examiner cannot require a reply to questions relating to “fraud,” “inequitable conduct,” or “violation of the duty of disclosure.”
• Questions must be limited to seeking answers reasonably necessary for the examiner to decide questions raised by the protest and which are before the examiner for decision.
• The examiner is not permitted to seek answers to questions which are not before the examiner for decision.

If the examiner requires additional information, they may use Form Paragraph 19.02 to request specific information from the applicant within a set time period.