Editing MPEP 724

<noinclude>{{MPEP Section|720|700|}}</noinclude>

==[[MPEP 724|724 Trade Secret, Proprietary, and Protective Order Materials]]== 

<noinclude><div class="noautonum">__TOC__</div></noinclude>

Situations arise in which it becomes necessary, or 
desirable, for parties to proceedings in the Patent and 
Trademark Office relating to pending patent applications 
or reexamination proceedings to submit to the 
Office trade secret, proprietary, and/or protective 
order materials. Such materials may include those 
which are subject to a protective or secrecy order 
issued by a court or by the International Trade Commission 
(ITC). While one submitting materials to the 
Office in relation to a pending patent application or 
reexamination proceeding must generally assume that 
such materials will be made of record in the file and 
be made public, the Office is not unmindful of the difficulties 
this sometimes imposes. The Office is also 
cognizant of the sentiment expressed by the court in 
In re Sarkar, 575 F.2d 870, 872, 197 USPQ 788, 
791 (CCPA 1978), which stated:

[T]hat wherever possible, trade secret law and patent laws 
should be administered in such manner that the former 
will not deter an inventor from seeking the benefit of the 
latter, because, the public is most benefited by the early 
disclosure of the invention in consideration of the patent 
grant. If a patent applicant is unwilling to pursue his right 
to a patent at the risk of certain loss of trade secret protection, 
the two systems will conflict, the public will be 
deprived of knowledge of the invention in many cases, 
and inventors will be reluctant to bring unsettled legal 
questions of significant current interest . . . for resolution.

Parties bringing information to the attention of the 
Office for use in the examination of applications and reexaminations are frequently faced with the prospect 
of having legitimate trade secret, proprietary, or protective 
order material disclosed to the public.

Inventors and others covered by 37 CFR 1.56(c)
and 1.555 have a duty to disclose to the Office information 
they are aware of which is material to patentability. 
37 CFR 1.56(b) states that

information is material to patentability when it is not 
cumulative to information already of record or being 
made of record in the application, and 

{{tab1}}(1) It establishes, by itself or in combination with other information, a prima facie case of unpatentability of a claim; or</p>

{{tab1}}(2) It refutes, or is inconsistent with, a position the applicant takes in:</p>

{{tab2}}(i) Opposing an argument of unpatentability relied on by the Office, or</p>

{{tab2}}(ii) Asserting an argument of patentability.</p>

A prima facie case of unpatentability is established when 
the information compels a conclusion that a claim is 
unpatentable under the preponderance of evidence, burden-
of-proof standard, giving each term in the claim 
its broadest reasonable construction consistent with 
the specification, and before any consideration is given to 
evidence which may be submitted in an attempt to establish 
a contrary conclusion of patentability.

It is incumbent upon patent applicants, therefore, to 
bring “material” information to the attention of the 
Office. It matters not whether the “material” information 
can be classified as a trade secret, or as proprietary 
material, or whether it is subject to a protective 
order. The obligation is the same; it must be disclosed 
if “material to patentability” as defined in 37 CFR 
1.56(b). The same duty rests upon a patent owner 
under 37 CFR 1.555 whose patent is undergoing reexamination.

Somewhat the same problem faces a protestor 
under 37 
CFR 1.291(a) who believes that trade secret, 
proprietary, or protective order material should be 
considered by the Office during the examination of an 
application.

In some circumstances, it may be possible to submit 
the information in such a manner that legitimate 
trade secrets, etc., will not be disclosed, e.g., by 
appropriate deletions of nonmaterial portions of the 
information. This should be done only where there 
will be no loss of information material to patentability 
under 37 CFR 1.56 or 1.555.

The provisions of this section do not relate to material 
appearing in the description of the patent application.

===724.01 Completeness of the Patent File Wrapper===

It is the intent of the Office that the patent file 
wrapper be as complete as possible insofar as “material” 
information is concerned. The Office attempts to 
minimize the potential conflict between full disclosure 
of “material” information as required by 37 CFR 
1.56 and protection of trade secret, proprietary, and 
protective order material to the extent possible.

The procedures set forth in the following sections 
are designed to enable the Office to ensure as complete 
a patent file wrapper as possible while preventing 
unnecessary public disclosure of trade secrets, 
proprietary material, and protective order material.

===724.02 Method of Submitting Trade Secret, Proprietary, and/or Protective Order Materials===

Information which is considered by the party submitting 
the same to be either trade secret material or 
proprietary material, and any material subject to a 
protective order, must be clearly labeled as such and 
be filed in a sealed, clearly labeled, envelope or container. 
Each document or item must be clearly labeled 
as a “Trade Secret” document or item, a “Proprietary” 
document or item, or as an item or document “Subject 
To Protective Order.” It is essential that the terms 
“Confidential,” “Secret,” and “Restricted” or 
“Restricted Data” not be used when marking these 
documents or items in order to avoid confusion with 
national security information documents which are 
marked with these terms (note also MPEP § 121). If 
the item or document is “Subject to Protective Order” 
the proceeding, including the tribunal, must be set 
forth on each document or item. Of course, the envelope 
or container, as well as each of the documents or 
items, must be labeled with complete identifying 
information for the file to which it is directed, including 
the Office or area to which the envelope or container 
is directed.




 

Examples of appropriate labels for such an envelope 
or container addressed to an application are as 
follows: (Appropriate changes would be made for 
papers filed in a reexamination file.)

A. “TRADE SECRET MATERIAL NOT OPEN 
TO PUBLIC. TO BE OPENED ONLY BY 
EXAMINER OR OTHER AUTHORIZED U.S. 
PATENT AND TRADEMARK OFFICE 
EMPLOYEE.

DO NOT SCAN

In re Application of

Application No.

Filed:

For: (Title of Invention)

TC Art Unit:

Examiner:

B. “PROPRIETARY MATERIAL NOT OPEN TO 
PUBLIC. TO BE OPENED ONLY BY EXAMINER 
OR OTHER AUTHORIZED U.S. PATENT 
AND TRADEMARK OFFICE EMPLOYEE.

DO NOT SCAN

In re Application of

Application No.

Filed:

For: (Title of Invention)

TC Art Unit:

Examiner:

C. “MATERIAL SUBJECT TO PROTECTIVE 
ORDER — NOT OPEN TO PUBLIC. TO BE 
OPENED ONLY BY EXAMINER OR OTHER 
AUTHORIZED U.S. PATENT AND TRADEMARK 
OFFICE EMPLOYEE.

DO NOT SCAN

Tribunal Issuing Protective Order:

Civil Action or Other Identification No.:

Date of Order:

Current Status of Proceeding: (Pending, Stayed, 
etc.)

In re application of:

Application No.

Filed:

For: (Title of Invention)

TC Art Unit:

Examiner:

The envelope or container must be accompanied by 
a transmittal letter which also contains the same identifying 
information as the envelope or container. The 
transmittal letter must also state that the materials in 
the envelope or container are considered trade secrets 
or proprietary, or are subject to a protective order, and 
are being submitted for consideration under MPEP 
§ 724. A petition under 37 CFR 1.59 and fee therefor 
(37 CFR 1.17(g)) to expunge the information, if 
found not to be important to a reasonable examiner 
in deciding whether to allow the application to issue 
as a patent, should accompany the envelope or container.


In order to ensure that such an envelope or container 
is not mishandled, either prior to reaching the 
Office, or in the Office, the envelope or container 
should be hand-carried to the Customer Window 
located at:

U.S. Patent and Trademark Office

Customer Service Window

Randolph Building

401 Dulany Street

Alexandria, VA 22314

The envelope or container may also be mailed to 
the Commissioner for Patents, P.O. Box 1450, Alexandria, 
VA 22313-1450.

Upon receipt of the envelope or container, the 
Office will place the envelope or container in an Artifact 
folder if the application is an Image File Wrapper 
(IFW) application. If the application is maintained in 
paper, the confidential or proprietary information will 
be retained in the envelope or container.

===724.03 Types of Trade Secret, Proprietary, and/or Protective Order Materials Submitted Under MPEP § 724.02===

The types of materials or information contemplated 
for submission under MPEP § 724.02 include information 
“material to patentability” but does not 
include information favorable to patentability. Thus, 
any trade secret, proprietary, and/ or protective order 
materials which are required to be submitted on 
behalf of a patent applicant under 37 
CFR 1.56 or 
patent owner under 37 CFR 1.555 can be submitted in 
accordance with MPEP § 724.02. Neither 37 
CFR 
1.56 nor 1.555 require the disclosure of information 
favorable to patentability, e.g., evidence of commercial 
success of the invention (see 42 Fed. Reg. 5590). 
Such information should not be submitted in accordance 
with MPEP § 724.02. If any trade secret, proprietary, 
and/or protective order materials are 
submitted in amendments, arguments in favor of patentability, 
or affidavits under 37 CFR 1.131 or 1.132, 
they will be made of record in the file and will not be 
given any special status.

Insofar as protestors under 37 CFR 1.291(a) are 
concerned, submissions can be made in accordance 
with MPEP § 724.02 before the patent application is 
published, if protestor or petitioner has access to the 
application involved. After the patent application has 
been published under 35 U.S.C. 122(b)(1), no protest 
may be filed without the express consent of the applicant. 
Any submission filed by a protestor must follow 
the requirements for service. The Office cannot 
ensure that the party or parties served will maintain 
the information secret. If the party or parties served 
find it necessary or desirable to comment on material 
submitted under MPEP § 724 before it is, or without 
its being, found “material to patentability,” such comments 
should either (A) not disclose the details of the 
material or (B) be submitted in a separate paper under 
MPEP § 724.02.

===724.04 Office Treatment and Handlingof Materials Submitted Under MPEP § 724.02===

The exact methods of treating and handling materials 
submitted under MPEP § 724.02 will differ 
slightly depending upon whether the materials are 
submitted in an original application subject to the 
requirements of 35 
U.S.C. 122 or whether the submission 
is made in a reissue application or reexamination 
file open to the public under 37 CFR 1.11(b) or (d). 
Prior to publication, an original application is not 
open to the public under 35 U.S.C. 122(a). After the 
application has been published under 35 U.S.C. 
122(b)(1), copies of the file wrapper of the pending 
application are available to any member of the public 
who has filed a request under 37 CFR 
1.14(a)(1)(ii) or (a)(1)(iii). See MPEP § 103. 

If the application file and contents are available 
to the public pursuant to 37 CFR 1.11 or 1.14, any 
materials submitted under MPEP § 724.02 will onlybe released to the public with any other application 
papers if no petition to expunge (37 CFR 1.59) was 
filed prior to the mailing of a notice of allowability or 
notice of abandonment, or if a petition to expunge was 
filed and the petition was denied. Prior to the mailing 
of the notice of allowability or notice of abandonment, 
the examiner will review the patent application 
file and determine if a petition to expunge is in the 
application file but not acted upon. If the application 
is being allowed, if the materials submitted under 
MPEP § 724.02 are found not to be important to a reasonable 
examiner in deciding whether to allow the 
application to issue as a patent, the petition to 
expunge will be granted and the materials will be 
expunged. If the materials are found to be important 
to a reasonable examiner in deciding whether to allow 
the application to issue as a patent, the petition to 
expunge will be denied and the materials will become 
part of the application record and will be available to 
the public upon issuance of the application as a patent. 
With the mailing of the notice of abandonment, if a 
petition to expunge has been filed, irrespective of 
whether the materials are found to be important or not 
to a reasonable examiner in deciding on patentability, 
the petition to expunge will be granted and the materials 
expunged.

Upon receipt of the submission, the transmittal letter 
and the envelope or container will be date stamped 
and brought to the attention of the examiner or other 
Office employee responsible for evaluating the submission. 
The receipt of the transmittal letter and envelope 
or container will be noted on the “Contents” of 
the application or reexamination file. For Image File 
Wrapper (IFW) processing, see IFW Manual section 
3.6. In addition, the face of the application or reexamination 
file will have the notation placed thereon to 
indicate that trade secret, proprietary, or protective 
order material has been filed. For Image File Wrapper 
(IFW) processing, see IFW Manual section 3.6.
The location of the material will also be specified. 
The words “TRADE SECRET MATERIALS FILED 
WHICH ARE NOT OPEN TO PUBLIC” on the face 
of the file are sufficient to indicate the presence of 
trade secret material. Similar notations will be made 
for either proprietary or protective order materials.

====724.04(a)Materials Submitted in an Application Covered by 35 U.S.C. 122====

Any materials submitted under MPEP § 724.02 in 
an application covered by 35 U.S.C. 122 will be 
treated in the following manner:

(A) The submitted material will be maintained in 
the original envelope or container (clearly marked 
“Not Open To The Public”) and will not be publicly 
available until a determination has been made as to 
whether or not the information is important to a reasonable 
examiner in deciding whether to allow the 
application to issue as a patent. Prior to publication, 
an original application is not available to the 
public under 35 U.S.C. 122(a). After publication of 
the application under 35 U.S.C. 122(b)(1), where the 
application file and contents are available to the public 
pursuant to 37 CFR 1.11 or 1.14, any materials 
submitted under MPEP § 724.02 will only be released 
to the public with any other application papers if no 
petition to expunge (37 CFR 1.59) was filed prior to 
the mailing of a notice of allowability or notice of 
abandonment, or if a petition to expunge was filed and 
the petition was denied.

(B) If the application is to be abandoned, prior 
to the mailing of a notice of abandonment, the examiner 
will review the patent application file and determine 
if a petition to expunge is in the application file 
but not acted upon. If a petition to expunge has been 
filed, irrespective of whether the materials are found 
to be important or not to a reasonable examiner in 
deciding on patentability, the petition to expunge will 
be granted and the materials expunged. If no petition 
to expunge has been filed, the materials will be available 
to the public under 37 CFR 1.14(a)(1)(ii) or 
(a)(1)(iv).

(C) If the application is being allowed, prior to 
the mailing of a notice of allowability, the examiner 
will review the patent application file and determine if 
a petition to expunge is in the application file but not 
acted upon. The examiner, or other appropriate 
Office official who is responsible for considering the 
information, will make a determination as to whether 
or not any portion or all of the information submitted 
is important to a reasonable examiner in deciding 
whether to allow the application to issue as a patent.

(D) If any portion or all of the submitted information 
is found important to a reasonable examiner in 
deciding whether to allow the application to issue as a 
patent, the petition to expunge will be denied and the 
information will become a part of the file history 
(and scanned, if the application is an Image File 
Wrapper (IFW) application), which upon issuance of 
the application as a patent would become available to 
the public.

(E) If any portion or all of the submitted information 
is found not to be important to a reasonable 
examiner in deciding whether to allow the application 
to issue as a patent, the petition to expunge will be 
granted and the information expunged.

(F) If a petition to expunge is not filed prior 
to the mailing of the notice of allowability, the materials 
submitted under MPEP § 724.02 will be released 
to the public upon the issuance of the application as a 
patent and upon the filing of a request and the appropriate 
fee (37 CFR 1.14).

(G) Any petition to expunge the submitted information 
or any portion thereof under 37 CFR 1.59(b)
will be treated in accordance with MPEP § 724.05.

====724.04(b) Materials Submitted in Reissue Applications Open to the Public Under 37 CFR 1.11(b)====

Any materials submitted under MPEP § 724.02 in a 
reissue application open to the public under 37 CFR 
1.11(b) will be treated in the following manner:

(A) Materials submitted under MPEP § 724.02will only be released to the public with any other 
application papers if no petition to expunge (37 CFR 
1.59) was filed prior to the mailing of a notice of 
allowability or notice of abandonment, or if a petition 
to expunge was filed and the petition was denied.
The submitted information will be maintained separate 
from the reissue application file and will not be 
publicly available until a determination has been 
made as to whether or not the information is important 
to a reasonable examiner in deciding whether to 
allow the application to issue as a patent.

(B) If the reissue application is to be abandoned, 
prior to the mailing of a notice of abandonment, the 
examiner will review the reissue application file and 
determine if a petition to expunge is in the reissue 
application file but not acted upon. If a petition to 
expunge has been filed, irrespective of whether the 
materials are found to be important or not to a reasonable 
examiner in deciding on patentability, the petition 
to expunge will be granted and the materials 
expunged. If no petition to expunge has been filed, the 
materials will be available to the public under 37 CFR 
1.11(b). 

(C) If the reissue application is being allowed, 
prior to the mailing of a notice of allowability, the 
examiner will review the reissue application file and 
determine if a petition to expunge is in the reissue 
application file but not acted upon. The examiner, or 
other appropriate Office official who is responsible 
for considering the information, will make a determination 
as to whether or not any portion or all of the 
information submitted is important to a reasonable 
examiner in deciding whether to allow the application 
to issue as a patent.

(D) If any portion or all of the submitted information 
is found important to a reasonable examiner in 
deciding whether to allow the application to issue as a 
patent, the petition to expunge will be denied and 
the information will thereafter become a permanent 
part of the reissue application file and open to the 
public.

(E) If any portion or all of the submitted information 
is found not to be important to a reasonable 
examiner in deciding whether to allow the application 
to issue as a patent, the petition to expunge will be 
granted and the information expunged.

(F) If a petition to expunge is not filed prior 
to the mailing of the notice of allowability, the materials 
submitted under MPEP § 724.02 will become a 
permanent part of the reissue application file and open 
to the public under 37 CFR 1.11(b).

(G) Any petition to expunge a portion or all of the 
submitted information will be treated in accordance 
with MPEP § 724.05.

====724.04(c) Materials Submitted in Reexamination File Open to the Public Under 37 CFR 1.11(d)====

Any materials submitted under MPEP § 724.02 in a 
reexamination file open to the public under 37 CFR 
1.11(d) will be treated in the following manner:

(A) Materials submitted under MPEP § 724.02will only be released to the public with any other 
papers in the reexamination file if no petition to 
expunge (37 CFR 1.59) was filed prior to the mailing 
of a Notice of Intent to Issue Reexamination Certificate 
(NIRC), or if a petition to expunge was filed and 
the petition was denied. The submitted information 
will be maintained separate from the reexamination 
file and will not be publicly available until a determination 
has been made as to whether or not the information 
is important to a reasonable examiner in 
deciding whether or not a claim is patentable.

(B) Prior to the mailing of a NIRC, the examiner 
will review the reexamination file and determine if a 
petition to expunge is in the reexamination file but not 
acted upon. The examiner, or other appropriate 
Office official who is responsible for considering the 
information, will make a determination as to whether 
or not any portion or all of the information submitted 
is important to a reasonable examiner in deciding 
whether or not a claim is patentable.

(C) If any portion or all of the submitted information 
is found important to a reasonable examiner in 
deciding whether or not a claim is patentable, the 
petition to expunge will be denied and the information 
will thereafter become a permanent part of the 
reexamination file and open to the public.

(D) If any portion or all of the submitted information 
is found not to be important to a reasonable 
examiner in deciding whether or not a claim is patentable, 
the petition to expunge will be granted and 
the information expunged. 

(E) If a petition to expunge is not filed prior to 
the mailing of the NIRC, the materials submitted 
under MPEP § 724.02 will become a permanent part 
of the reexamination file and open to the public under 
37 CFR 1.11(d).

(F) Any petition to expunge a portion or all of 
the submitted information under 37 CFR 1.59(b) will 
be treated in accordance with MPEP § 724.05.

===724.05 Petition To Expunge Information or Copy of Papers in Application File===

I.INFORMATION SUBMITTED UNDER MPEP § 724.02 

A petition under 37 CFR 1.59(b) to expunge information 
submitted under MPEP § 724.02, or that 
should have been submitted under MPEP § 724.02 (as 
where proprietary information is submitted in an 
information disclosure statement but inadvertently not 
submitted in a sealed envelope as discussed in MPEP 
§ 724.02) will be entertained only if the petition fee 
(37 CFR 1.17(g)) is filed and the information has 
been found not to be important to a reasonable examiner 
in deciding on patentability. If the information is 
found to be important to a reasonable examiner in 
deciding on patentability, any petition to expunge the 
information will be denied. Any such petition to 
expunge information submitted under MPEP § 724.02should be submitted at the time of filing the information 
under MPEP § 724.02 and directed to the Technology 
Center (TC) to which the application is 
assigned. Such petition must contain:

(A)a clear identification of the information to be 
expunged without disclosure of the details thereof;

(B)a clear statement that the information to be 
expunged is trade secret material, proprietary material, 
and/or subject to a protective order, and that the 
information has not been otherwise made public;

(C)a commitment on the part of the petitioner to 
retain such information for the period of any patent 
with regard to which such information is submitted;

(D)a statement that the petition to expunge is 
being submitted by, or on behalf of, the party in interest 
who originally submitted the information;

(E)the fee as set forth in 37 CFR 1.17(g) for 
a petition under 37 CFR 1.59(b).

Any such petition to expunge should accompany 
the submission of the information and, in any event, 
must be submitted in sufficient time that it can be 
acted on prior to the mailing of a notice of allowability 
or a notice of abandonment for original and reissue 
applications, or prior to the mailing of a Notice of 
Intent to Issue Reexamination Certificate (NIRC) for 
reexamination proceedings. Timely submission of the 
petition is, accordingly, extremely important. If the 
petition does not accompany the information when it 
is initially submitted, the petition should be submitted 
while the application or reexamination is pending in 
the Technology Center (TC) and before it is transmitted 
to the Publishing Division. If a petition to expunge 
is not filed prior to the mailing of a notice of 
allowability or a notice of abandonment for original 
and reissue applications, or prior to the mailing of a 
NIRC for reexamination proceedings, any material 
then in the file will remain therein and be open to the 
public in accordance with 37 CFR 1.14. Accordingly, 
it is important that both the submission of any material 
under MPEP § 724.02 and the submission of any 
petition to expunge occur as early as possible during 
the examination process. The decision will be held in 
abeyance and be decided upon the close of prosecution 
on the merits.

II.INFORMATION UNINTENTIONALLY 
SUBMITTED IN APPLICATION

A petition to expunge information unintentionally 
submitted in an application (other than information 
forming part of the original disclosure) may be filed 
under 37 CFR 1.59(b), provided that: 

(A)the Office can effect such return prior to the 
issuance of any patent on the application in issue; 

(B)it is stated that the information submitted was 
unintentionally submitted and the failure to obtain its 
return would cause irreparable harm to the party who 
submitted the information or to the party in interest on 
whose behalf the information was submitted; 

(C)the information has not otherwise been made 
public;

(D)there is a commitment on the part of the petitioner 
to retain such information for the period of any 
patent with regard to which such information is submitted;

(E)it is established to the satisfaction of the 
Director that the information to be returned is not 
material information under 37 CFR 1.56; and

(F)the petition fee as set forth in 37 CFR 
1.17(g) is included.

A request to expunge information that has not been 
clearly identified as information that may be later subject 
to such a request by marking and placement in a 
separate sealed envelope or container shall be treated 
on a case-by-case basis. Applicants should note 
that 
unidentified information that is a trade secret, 
proprietary, or subject to a protective order that is submitted 
in an Information Disclosure Statement may 
inadvertently be placed in an Office prior art search 
file by the examiner due to the lack of such identification 
and may not be retrievable.

III.INFORMATION SUBMITTED IN INCORRECT 
APPLICATION

37 CFR 1.59(b) also covers the situation where an 
unintended heading has been placed on papers so that 
they are present in an incorrect application file. In 
such a situation, a petition should request that the 
papers be expunged rather than transferred to the correct 
application file. For Image File Wrapper (IFW) 
processing, see IFW Manual. The grant of such a petition 
will be governed by the factors enumerated in 
paragraph II of this section in regard to the unintentional 
submission of information. Where the Office 
can determine the correct application file that the 
papers were actually intended for, based on identifying 
information in the heading of the papers (e.g., 
application number, filing date, title of invention and 
inventor(s) name(s)), the Office will transfer the 
papers to the correct application file for which they 
were intended without the need of a petition.

IV.INFORMATION FORMING PART OF 
THE ORIGINAL DISCLOSURE

A petition to expunge a part of the original disclosure 
must be filed under 37 CFR 1.183, since such a 
request requires a waiver of the requirements of 
37 CFR 1.59(a). Petitions under 37 CFR 1.183 should 
be directed to the Office of Petitions. The petition 
must explain why justice requires waiver of the rules 
to permit the requested material to be expunged. It 
should be noted that petitions to expunge information 
which is a part of the original disclosure, such as the 
specification and drawings, will ordinarily not be 
favorably entertained. The original disclosures of 
applications are scanned for record keeping purposes. 
Accordingly, the grant of a petition to expunge information 
which is part of the original disclosure would 
require that the USPTO record of the originally filed 
application be changed, which may not be possible. 

===724.06 Handling of Petitions To Expunge Information or Copy of Papers in Application File===

{{Statute|37 CFR 1.59 Expungement of information or copy of papers in application file.}}
(a)
{{tab1}}(1) Information in an application will not be expunged, except as provided in paragraph (b) of this section.</p>

{{tab1}}(2) Information forming part of the original disclosure (i.e., written specification including the claims, drawings, and any preliminary amendment specifically incorporated into an executed oath or declaration under §§ 1.63 and 1.175) will not be expunged from the application file.</p>

(b) An applicant may request that the Office expunge information, other than what is excluded by paragraph (a)(2) of this section, by filing a petition under this paragraph. Any petition to expunge information from an application must include the fee set forth in § 1.17(g) and establish to the satisfaction of the Director that the expungement of the information is appropriate in which case a notice granting the petition for expungement will be provided.

(c) Upon request by an applicant and payment of the fee specified in § 1.19(b), the Office will furnish copies of an application, unless the application has been disposed of (see §§ 1.53(e), (f) and (g)). The Office cannot provide or certify copies of an application that has been disposed of.
|}

37 CFR 1.59 provides that information, other than 
the original disclosure of the application, may be 
expunged from the file wrapper provided a petition to 
expunge under 37 CFR 1.59(b) and the required fee 
set forth in 37 CFR 1.17(g) are filed, and further 
that petitioner has established to the satisfaction of the 
Director that the return of the information is appropriate. 
Expungement of information that was originally 
submitted to the Office under MPEP §
724.02, or that should have been submitted in a sealed envelope as 
discussed in MPEP § 724.02, is appropriate when the 
petitioner complies with items (A)-(E) set forth in 
MPEP § 724.05, paragraph I, and the examiner or 
other appropriate Office official who is responsible 
for considering the information has determined that 
the information is not important to a reasonable examiner 
in deciding whether to allow the application (i.e., 
the information is not material to patentability). 
Expungement of information that was inadvertently 
submitted to the Office is appropriate provided that
items (A)-(F) set forth in MPEP § 724.05, paragraph 
II, are satisfied. See also MPEP § 724.

Where the information to be expunged was not submitted 
pursuant to MPEP § 724.02 or as part of an 
Information Disclosure Statement, the petition should 
be sent to the Office of Petitions for decision. 

The decision on the petition to expunge should be 
held in abeyance until the application is allowed or an 
Ex parte Quayle action, or a Notice of Abandonment 
is mailed, at which time the petition will be decided. 
However, where it is clear that the information was 
submitted in the wrong application, then the decision 
on the petition should not be held in abeyance. See 
MPEP § 724.05, paragraph III. In a pending application 
that has not been allowed or in which an Ex parte 
Quayle action has not been mailed, the examiner may 
not have finally considered what is material to a decision 
of patentability of the claims. Petitioner may be 
notified that the decision on the petition under 
37 CFR 1.59(b) to expunge information in an application 
will be held in abeyance and be decided upon 
allowance of the application, or the mailing of an Ex 
parte Quayle action or a Notice of Abandonment 
using form paragraph 7.204.

When an application has been allowed, an Ex parte 
Quayle action has been mailed, or an application is 
abandoned, a petition to expunge should be decided 
by a TC Director (see MPEP § 1002.02(c)). At this 
time a determination must be made as to whether the 
information in question is material. Form paragraph 
7.205 should be used to grant a petition to expunge, 
whereas form paragraphs 7.206-7.213 should be used 
to dismiss such a petition.