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Topic Summary

Posted by: Brad
« on: August 12, 2017, 08:16:03 AM »

Sorry I have never done a protest before and am hesitant to comment on this rule because its worded very strangely staring off with the word "except".    I have had good luck calling the UPSTO and you can sometimes speak with their attorneys or people who help draft the rules to ask for clarification.   
Posted by: Theorist
« on: August 11, 2017, 07:22:08 PM »

Please explain what this means:

“MPEP 1901.04 When Should the Protest Be Submitted [R-08.2012]
Except where a protest is accompanied by the written consent of the applicant as provided in 37 CFR1.291(b)(1) ( I read the following then to mean a protest NOT requiring “written consent of the applicant”) , a protest under 37 CFR 1.291(a) must be submitted prior to the date the application was published under 37 CFR 1.211 or the mailing of a notice of allowance under 37 CFR 1.311, whichever occurs first, and the application must be pending when the protest and application file are brought before the examiner in order to be ensured of consideration. As a practical matter, any protest should be submitted as soon as possible after the protestor becomes aware of the existence of the application to which the protest is to be directed. By submitting a protest early in the examination process  ,i.e., before the Office acts on the application if possible, the protestor ensures that the protest will receive maximum consideration and will be of the most benefit to the Office in its examination of the application. A protest submitted after the mailing of the notice of allowance … (I read this as a unique protest which as noted above does NOT require (see: “except”) an applicant’s written consent AND as prima facie evidence that this peculiar protest does NOT need to fulfill the requirements of any protest which is submitted BEFORE the Notice of Allowance since it is submitted AFTER) …will not knowingly be ignored if the protest includes prior art documents which clearly anticipate or clearly render obvious one or more claims. However, the likelihood of consideration of a protest decreases as the patent date approaches.”