| General Information |
Referenced Items (147, 148, 149, 150, 151, 152, 153, 154, 155, 156, 157, 158, 159, 160, 161, 162, 163) |
(154) Reminder of the Proper Procedure for
Filing Confidential Information
Pursuant to MPEP 724.02
In filing patent applications, applicants and their
representatives should carefully review the application papers to
ensure that trade secret information, proprietary information, and
protective order materials that should be kept confidential are not
included unless they are clearly marked and submitted in compliance
with Manual of Patent Examining Procedure (MPEP), Section 724.02 (8th
ed. 2001) (Rev. 1, Feb. 2003). If information is not submitted in
compliance with MPEP 724.02, the information will be scanned along with
the application into the Image File Wrapper (IFW) system. This may be
undesirable from applicant's perspective, because once information is
included in the IFW system, it will only be permanently deleted for
national security concerns.
In general, patent applications, and papers related to the
application, are scanned and maintained in an IFW. Application
documents that are not scanned include documents that the United States
Patent and Trademark Office (Office) is unable to scan (e.g., certain
photographs and documents submitted in electronic form, such as the
Computer Readable form for a Sequence Listing) and documents that are
clearly marked and submitted in compliance with MPEP 724.02.
Application documents that are not scanned are maintained in an
artifact folder, and are not available as part of the IFW in the Patent
Application Information Retrieval (PAIR) system. If the application
file and contents are available to the public pursuant to 37 CFR Secs.
1.11 or 1.14, any materials submitted pursuant to MPEP 724.02 will be
in an artifact folder and will be released to the public with any other
application papers if a petition to expunge (37 CFR Sec. 1.59) was either
filed and denied, or not filed, by the time the application was allowed
or a notice of abandonment is mailed. With the mailing of the notice of
allowance or notice of abandonment, the examiner will review the patent
application file and determine if a petition to expunge is in the file
but not acted upon. If a petition to expunge was dismissed as being
premature since the application was not yet allowed, the petition will
be acted upon again, even if applicant had previously been required to
resubmit the petition after allowance. If the application is being
allowed, and the information is found to not be important to a
reasonable examiner in deciding on patentability (see MPEP
724.04(A)-(C)), the petition to expunge will be granted and the
information will be expunged. If the information is found to be
important to a reasonable examiner in deciding on patentability, the
petition to expunge will be denied and the information 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 information is found to be important or not to a
reasonable examiner in deciding on patentability, the petition to
expunge will be granted and the information expunged. Publication of
the application as a patent application publication, or, if a reissue
application or reexamination proceeding, in the Official Gazette will
not cause the information to be made available to the public because a
decision as to materiality cannot be made until a notice of allowance
is mailed.
Use Care In Submitting Information to the Office
Patent applications are generally published before a patent
issues. Applicants should consider whether personal information is
necessary in a document to be included in a patent application, before
submitting the information to the Office. The Office does not require
the Social Security Number of an inventor, and there is no need to
include this type of personal information in a patent application. Even
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US PATENT AND TRADEMARK OFFICE |
1469 CNOG 478 |
where the Office does require some degree of confidential information,
applicants can still take steps to protect their privacy. For example,
a copy of a cancelled check may be necessary to show that a payment was
made, but the copy can be redacted before it is submitted to the Office
to block the routing number on the check. In addition, since patent
applications are published with the correspondence address of the
application on the patent application publication, applicants,
particularly those applicants who are not using a patent attorney or
patent agent, may wish to consider using a business address rather than
a home address to preserve privacy.
Once private information is included in a patent application
file by scanning a document and adding an image of the document to the
patent application's IFW, the document will only be removed from the
IFW for national security concerns. For example, if an applicant
includes the wrong application number on some correspondence, and the
Office scans the paper and adds the paper to the application file
corresponding to the number given, when a petition to expunge (37 CFR
Sec. 1.59) is granted, the document is not removed from the IFW. Instead
of removing the document, the Office will mark the document
"hidden," so if the IFW is available to the public, the document
will not display. The document can also be "un-hidden" and reappear
in the IFW. Similarly, if an applicant does not follow the procedures
of MPEP 724.02, and submits proprietary information to the Office
commingled with other documents, when a petition to expunge is granted,
the proprietary information will be "hidden" but not permanently
deleted from the IFW.
When filing trade secret information, proprietary information,
or protective order materials is necessary to comply with the duty of
disclosure pursuant to 37 CFR Sec. 1.56, applicants seeking to ensure
that the information is not made public should follow the procedure set
forth in MPEP 724.02. For example, a Confidential Information
Disclosure Statement (Confidential IDS) should be prepared, listing the
confidential document on an information disclosure statement (e.g.,
PTO/SB/08). The document to be maintained in confidence must be placed
in an envelope or container clearly labeled, for example:
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:
Materials submitted in compliance with MPEP 724.02 should be
mailed to the Office or hand carried to the Customer Window as set
forth in "Centralized Delivery and Facsimile Transmission
Requirements for Patent Application Related Correspondence," 1275
Off. Gaz. Patent Office Notices 200 (Oct. 28, 2003), in order to ensure
appropriate processing of the documents.
Questions regarding this notice should be directed to Karin
Ferriter, Senior Legal Advisor, Office of Patent Legal Administration,
at (703)308-6906, or to PatentPractice@uspto.gov.
April 23, 2004 STEPHEN G. KUNIN
Deputy Commissioner for
Patent Examination Policy
[1282 OG 107]