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What are the requirements for submitting a protest under 37 CFR 1.291?

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What are the requirements for submitting a protest under 37 CFR 1.291?

Source: FAQ (MPEP-Based)BlueIron Update: 2024-09-30
10 Rules5 Related FAQs

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.

A protest under 37 CFR 1.291 must meet the following requirements:

  • Be submitted in writing
  • Specifically identify the application (by application number or serial number and filing date)
  • Include an information list of all submitted documents
  • Provide a concise explanation of the relevance of each listed item
  • Include English language translations of any non-English documents
  • Be accompanied by copies of all listed items (except U.S. patents and U.S. patent application publications)

The MPEP states: “A protest under 37 CFR 1.291 must be submitted in writing, must specifically identify the application to which the protest is directed by application number or serial number and filing date, and must include an information list of all documents, portions of documents, or other information submitted; a concise explanation of the relevance of each listed item; an English language translation of any non-English language document or other information identified in the information list; and be accompanied by a copy of each item in the information list except for U.S. patents and U.S. patent application publications.“

  • Protest Must Be Submitted In Writing With Specific Information ListMPEP 1901.03Required
  • Protest Must Include Detailed Information List and Supporting DocumentsMPEP 1901Required
  • Portion of Non-English Document Must Be Submitted with TranslationMPEP 1901Required
  • Protest Must Include Specific Information and DocumentsMPEP 1901Required
  • First Protest Must Include Statement or Comply with Paragraph (c)(5)MPEP 1901Required
  • Protest Must Be Submitted By MailMPEP 1901.03Prohibited
  • Item of Other Information Must Be Dated If KnownMPEP 1901
  • Protest Must Be Submitted by MailMPEP 1901.03Permitted
  • Protestor May List Non-Publication Documents as Other InfoMPEP 1901Permitted
  • Submission of Other Information Including Adverse Facts RequiredMPEP 1901
  • Can a protestor submit additional information after filing a protest?
  • Can a protest be submitted anonymously to the USPTO?
  • What happens if a protest is not matched with the correct application?
  • Can a protest be submitted electronically to the USPTO?
  • What are the requirements for a cover letter in a patent protest?
Topics: MPEP 1900 - Protest MPEP 1901.03 - How Protest Is Submitted Patent Law Patent Procedure
Tags: director authority, protest, Protest Consent, Protest Examiner Action, Protest Prior Art
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