There are various mechanisms for submitting relevant prior art references in an attempt to defeat a competitor’s patent or patent application. The America Invents Act changed and added these mechanisms. For pending applications, a protest or third-party submission can be made. For an issued patent, one can file an inter partes review or a post-grant review. There are other niche mechanisms that can be used as well.
Today, I’ll review the protest as a method for submitting art in another applicant’s patent application. A protest against a pending application can be filed by any member of the public. A party obtaining knowledge of an application pending at the Office can file a protest against it and can call attention to any facts within their knowledge which, in their opinion, would make the grant of a patent on the application improper.
There are specific requirements for filing a protest, which include serving the protest upon the applicant to provide them with notice. The protest must also include a number of disclosures, including a listing of relied-upon information such as patent and publication references, an explanation of the relevance of the references, copies of the references, and translations of the references if necessary.
Timing is critical for a protest. A protest must be filed before the application is published or before a notice of allowance is issued in the case, whichever is earlier. Practically, a protestor should submit the protest as soon as possible after becoming aware of the existence of a pending patent application, which will provide the Patent Office the best opportunity to review the protest completely.
Once a patent application is published, the filing of a protest can only be made with the express written consent of the applicant. However, a protest can be submitted after a notice of allowance, but will likely not be entered. If it sets forth references which clearly anticipate or render obvious at least one of the claims, it may be considered. A protest will not be considered if it provides information which is merely cumulative.
The involvement of the entity filing the protest ends after filing the protest – they are not informed or updated regarding the ongoing status of the case.
Filing a protest should be carefully considered. There are strategic consequences for filing a protest that may dissuade the protestor from filing.