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Question:
Can any further submission of prior art by the same real party in interest be considered after the filing of the protest?
Answer:
After the filing of the protest, no further submission of prior art by the same real party in interest will be considered, except for new, non-cumulative prior art submitted requires that a second or subsequent protest by the same real party in interest include:
- (A) an explanation as to why the issue(s) raised in the second or subsequent protest are significantly different than those raised earlier;
- (B) an explanation as to why the significantly different issue(s) were not earlier presented; and
- (C) the processing fee.
Chapter Details:
The answer to this question can be found in chapter 1900 of the MPEP. This chapter covers Protest.
The answer is from the 9th Edition, Revision 01.2024, Published November 2024. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.
Section Summary:
This question and answer comes from section 1901.07 of the MPEP. The following is a brief summary of section 1901.07.
1901.07 Protestor Participation
37 CFR 1.291 does not permit protestor, or any other member of the public, to contact or receive information from the Office as to the disposition or status of the protest, or the application to which it is directed, or to participate in any Office proceedings relating to the protest.
- The Office does not serve copies of Office actions or other documents mailed by the Office on protestors, and does not require applicants to serve copies of papers filed with the Office on protestors.
- Furthermore, a protestor is not permitted to participate in interviews, appeal a decision by the examiner adverse to the protestor to the Patent Trial and Appeal Board, or participate in an appeal by applicant.