Third-Party Submissions and Protests

The United States Patent and Trademark Office (USPTO) is required by 35 U.S.C. § 131 et seq., to examine an application for patent and, when appropriate, issue a patent. The provisions of 35 U.S.C. §§ 122(c), 122(e), 131, and 151, as well as 37 CFR 1.290 and 1.291, limit the ability of a third party to have information entered and considered a patent application or to protest a patent application pending before the Office. 37 CFR 1.290 provides a mechanism for third parties to submit to the USPTO, for consideration and inclusion in the record of a patent application, any patens, published patent applications, or other patent publications of potential relevance to the examination of the application. A preissuance submission under 37 CFR 1.290 may be made in any non-provisional utility, design, and plant application, as well as in any continuing application. A preissuance submission under 37 CFR 1.290 must include a concise description of the asserted relevance of each document submitted and must be submitted within a certain statutory specific time period. 37 CFR 1.291 permits a member of the public to file a protest against a pending application. Protest pursuant to 37 CFR 1.921 are supported by a separate statutory provision from third party submissions under 37 CFR 1.290 (35 U.S.C. 122(c) v. 35 U.S.C. 122(e)). As a result, there are several differences between protests and third-party submissions. For example, 37 CFR 1.291 permits the submission of information that is not permitted in a third-party submission under 37 CFR 1.290. Specifically, 37 CFR 1.291 provides for the submission of information other than publications, including any facts or information submitted. Unlike the concise explanation of the relevance required for a preissuance submission under 37 CFR 1.290, which is limited to a description of a document’s relevance, the concise explanation for a protest under 37 CFR 1.291 allows for arguments against patentability. Additionally, the specified time period for submitted a protest differs from the time period for submitting third party submissions and is impacted by whether the protest is accompanied by the written consent of the application. The information collected via third party submissions under 37 CFR 1.290 and via the protests under 37 CFR 1.291 is necessary so that the public may contribute to the quality of issued patents. The USPTO will use this information, as appropriate, during the patent examination process to assist in evaluating the patent application.

The latest form for Third-Party Submissions and Protests expires 2021-09-30 and can be found here.

Protests by the public against pending applications under 37 CFR 1.291

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