1901.05 Acknowledgment of Protest [R-10.2019]
A protestor in an original or reissue application will not receive any communications from the Office relating to the protest, or to the application, other than the return of a self-addressed postcard which protestor may include with the protest in order to receive an acknowledgment that the protest has been received by the Office. 37 CFR 1.291(d). Where a self-addressed postcard is included with the protest, the Office will acknowledge receipt of the protest by return of the self-addressed postcard. Thus, it is to be noted that the receipt of the self-addressed postcard from the Office is not an indication that the protest complies with 37 CFR 1.291.
I. APPLICATIONS AND STATUS THEREOF MAINTAINED IN CONFIDENCE
The postcard acknowledging receipt of a protest in other than a reissue application will not and must not indicate whether such application in fact exists or the status of any such application. Office employees must exercise care to ensure that matters relating to applications are not discussed with protestor or communicated in writing to protestor. See MPEP § 1134. Original applications are, of course, required by 35 U.S.C. 122 to be kept in confidence unless published pursuant to 35 U.S.C. 122(b) or are available to the public pursuant to 37 CFR 1.14(a)(1)(iv), (v), or (vi). Thus, unless a protestor has been granted access to an original application, the protestor is not entitled to obtain from the Office any information concerning the same, including the mere fact that such an application exists. Petitions for access to patent applications with the exception of applications involved in or related to a proceeding before the Patent Trial and Appeal Board are decided by the Office of Petitions pursuant to delegation contained in MPEP § 1002.02(b). Reissue applications filed on, or after, March 1, 1977 are pursuant to 37 CFR 1.11(b) "open to inspection by the public." After an application is published pursuant to 35 U.S.C. 122(b), the application file contents become available to the public through the Office’s public application image file wrapper via the Office's website. In addition, a copy of the file content of the published application may be requested by filing a written request under 37 CFR 1.14(a)(1)(i) including the fee as set forth in 37 CFR 1.19(b).
The Office will communicate with the applicant regarding any protest entered in an application file and may require the applicant to supply information pursuant to 37 CFR 1.291(f), including replies to specific questions raised by the protest, in order for the Office to decide any issues raised thereby. Under 37 CFR 1.291(f), the examiner can require the applicant to reply to the protest and answer specific questions raised by the protest. See MPEP § 1901.06, subsection II.