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Editing MPEP 724
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==[[MPEP 724|724 Trade Secret, Proprietary, and Protective Order Materials]]== | ==[[MPEP 724|724 Trade Secret, Proprietary, and Protective Order Materials]]== | ||
<noinclude | <noinclude>__TOC__</noinclude> | ||
Situations arise in which it becomes necessary, or | Situations arise in which it becomes necessary, or | ||
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Parties bringing information to the attention of the | Parties bringing information to the attention of the | ||
Office for use in the examination of applications and reexaminations are frequently faced with the prospect | Office for use in the examination of applications and | ||
reexaminations are frequently faced with the prospect | |||
of having legitimate trade secret, proprietary, or protective | of having legitimate trade secret, proprietary, or protective | ||
order material disclosed to the public. | order material disclosed to the public. | ||
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made of record in the application, and | made of record in the application, and | ||
(1) It establishes, by itself or in combination with other | |||
information, a prima facie case of unpatentability of a | |||
claim; or | |||
(2) It refutes, or is inconsistent with, a position the applicant | |||
takes in: | |||
(i) Opposing an argument of unpatentability relied on by | |||
the Office, or | |||
(ii) Asserting an argument of patentability. | |||
A prima facie case of unpatentability is established when | A prima facie case of unpatentability is established when | ||
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unpatentable under the preponderance of evidence, burden- | unpatentable under the preponderance of evidence, burden- | ||
of-proof standard, giving each term in the claim | of-proof standard, giving each term in the claim | ||
its broadest reasonable construction consistent with | its | ||
the specification, and before any consideration is given to | broadest reasonable construction consistent with | ||
the | |||
specification, and before any consideration is given to | |||
evidence which may be submitted in an attempt to establish | evidence which may be submitted in an attempt to establish | ||
a contrary conclusion of patentability. | a contrary conclusion of patentability. | ||
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1.56(b). The same duty rests upon a patent owner | 1.56(b). The same duty rests upon a patent owner | ||
under 37 CFR 1.555 whose patent is undergoing reexamination. | under 37 CFR 1.555 whose patent is undergoing reexamination. | ||
Somewhat the same problem faces a protestor | Somewhat the same problem faces a protestor | ||
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appearing in the description of the patent application. | appearing in the description of the patent application. | ||
724.01Completeness of the Patent FileWrapper | |||
It is the intent of the Office that the patent file | It is the intent of the Office that the patent file | ||
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the Office or area to which the envelope or container | the Office or area to which the envelope or container | ||
is directed. | 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 | Upon receipt of the envelope or container, the | ||
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expunged. | expunged. | ||
Upon receipt of the submission, the transmittal letter | Upon receipt of the submission, the transmittal letter | ||
and the envelope or container will be date stamped | and the envelope or container will be date stamped | ||
and brought to the attention of the examiner or other | and brought to the attention of the examiner or other | ||
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treated in the following manner: | treated in the following manner: | ||
(A) The submitted material will be maintained in | (A)The submitted material will be maintained in | ||
the original envelope or container (clearly marked | the original envelope or container (clearly marked | ||
“Not Open To The Public”) and will not be publicly | “Not Open To The Public”) and will not be publicly | ||
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the petition was denied. | the petition was denied. | ||
(B) If the application is to be abandoned, prior | (B)If the application is to be abandoned, prior | ||
to the mailing of a notice of abandonment, the examiner | to the mailing of a notice of abandonment, the examiner | ||
will review the patent application file and determine | will review the patent application file and determine | ||
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granted and the information expunged. | granted and the information expunged. | ||
(F) If a petition to expunge is not filed prior | (F) If a petition to expunge is not filed prior | ||
to the mailing of the notice of allowability, the materials | to the mailing of the notice of allowability, the materials | ||
submitted under MPEP § 724.02 will be released | submitted under MPEP § 724.02 will be released | ||
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fee (37 CFR 1.14). | fee (37 CFR 1.14). | ||
(G) Any petition to expunge the submitted information | (G)Any petition to expunge the submitted information | ||
or any portion thereof under 37 CFR 1.59(b) | or any portion thereof under 37 CFR 1.59(b) | ||
will be treated in accordance with MPEP § 724.05. | will be treated in accordance with MPEP § 724.05. | ||
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1.11(b) will be treated in the following manner: | 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 | (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 | application papers if no petition to expunge (37 CFR | ||
1.59) was filed prior to the mailing of a notice of | 1.59) was filed prior to the mailing of a notice of | ||
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allow the application to issue as a patent. | allow the application to issue as a patent. | ||
(B) If the reissue application is to be abandoned, | (B)If the reissue application is to be abandoned, | ||
prior to the mailing of a notice of abandonment, the | prior to the mailing of a notice of abandonment, the | ||
examiner will review the reissue application file and | examiner will review the reissue application file and | ||
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1.11(b). | 1.11(b). | ||
(C) If the reissue application is being allowed, | (C)If the reissue application is being allowed, | ||
prior to the mailing of a notice of allowability, the | prior to the mailing of a notice of allowability, the | ||
examiner will review the reissue application file and | examiner will review the reissue application file and | ||
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examiner in deciding whether to allow the application | examiner in deciding whether to allow the application | ||
to issue as a patent. | to issue as a patent. | ||
(D) If any portion or all of the submitted information | (D) If any portion or all of the submitted information | ||
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part of the reissue application file and open to the | part of the reissue application file and open to the | ||
public. | public. | ||
(E) If any portion or all of the submitted information | (E) If any portion or all of the submitted information | ||
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granted and the information expunged. | granted and the information expunged. | ||
(F) If a petition to expunge is not filed prior | (F)If a petition to expunge is not filed prior | ||
to the mailing of the notice of allowability, the materials | to the mailing of the notice of allowability, the materials | ||
submitted under MPEP § 724.02 will become a | submitted under MPEP § 724.02 will become a | ||
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to the public under 37 CFR 1.11(b). | to the public under 37 CFR 1.11(b). | ||
(G) Any petition to expunge a portion or all of the | (G)Any petition to expunge a portion or all of the | ||
submitted information will be treated in accordance | submitted information will be treated in accordance | ||
with MPEP § 724.05. | with MPEP § 724.05. | ||
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1.11(d) will be treated in the following manner: | 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 | (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 | papers in the reexamination file if no petition to | ||
expunge (37 CFR 1.59) was filed prior to the mailing | expunge (37 CFR 1.59) was filed prior to the mailing | ||
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deciding whether or not a claim is patentable. | deciding whether or not a claim is patentable. | ||
(B) Prior to the mailing of a NIRC, the examiner | (B)Prior to the mailing of a NIRC, the examiner | ||
will review the reexamination file and determine if a | will review the reexamination file and determine if a | ||
petition to expunge is in the reexamination file but not | petition to expunge is in the reexamination file but not | ||
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whether or not a claim is patentable. | whether or not a claim is patentable. | ||
(C) If any portion or all of the submitted information | (C)If any portion or all of the submitted information | ||
is found important to a reasonable examiner in | is found important to a reasonable examiner in | ||
deciding whether or not a claim is patentable, the | deciding whether or not a claim is patentable, the | ||
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reexamination file and open to the public. | reexamination file and open to the public. | ||
(D) If any portion or all of the submitted information | (D)If any portion or all of the submitted information | ||
is found not to be important to a reasonable | is found not to be important to a reasonable | ||
examiner in deciding whether or not a claim is patentable, | examiner in deciding whether or not a claim is patentable, | ||
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the information expunged. | the information expunged. | ||
(E) If a petition to expunge is not filed prior to | (E)If a petition to expunge is not filed prior to | ||
the mailing of the NIRC, the materials submitted | the mailing of the NIRC, the materials submitted | ||
under MPEP § 724.02 will become a permanent part | under MPEP § 724.02 will become a permanent part | ||
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===724.05 Petition To Expunge Information or Copy of Papers in Application File=== | ===724.05 Petition To Expunge Information or Copy of Papers in Application File=== | ||
I.INFORMATION SUBMITTED UNDER MPEP § 724.02 | I.INFORMATION SUBMITTED UNDER | ||
MPEP § 724.02 | |||
A petition under 37 CFR 1.59(b) to expunge information | A petition under 37 CFR 1.59(b) to expunge information |