By Matthew C. Phillips and Kevin B. Laurence of Stoel Rives LLP
Practically all protests occur in reissue applications. The only statute pertinent to protests is 35 U.S.C. § 122(c), which generally prohibits them: “[N]o protest or other form of pre-issuance opposition to the grant of a patent on an application may be initiated after publication of the application without the express written consent of the applicant.”1 A protest in a reissue application, however, is not a “pre-issuance opposition to the grant of a patent” because the patent to be reissued has already been granted. Thus, the prohibition against the filing of a protest in 35 U.S.C. § 122(c) is not applicable to a reissue application, and a protest is permitted after publication of the reissue application. A reissue application is not published in its entirety like a regular patent application, but an announcement is made in the Official Gazette and the file content is made publicly available. All reissue applications are therefore published for purposes of eligibility for protests.
WHO MAY FILE A PROTEST?
A protest may be filed by any “member of the public.”2
The protest need not identify the real party in interest and thus may be filed anonymously. 3
CONTENT OF A PROT...