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> **Case file Content**
>
> Analysis Of Records to be Retained in
>
> Electronic Patent and Trademark Case Files**\
> **
>
> February 26, 1999

**Contract Number:** 50-PAPT-700041

**Deliverable:** 98-03-9

**Government Task Managers:** Arthur F. Purcell, (703) 308-6868, FAX
(703) 308-6916\
Kathy Schultz (703) 308-7400, FAX (703)308-7407

**Contractor:** Cohasset Associates, Inc.\
3806 Lake Point Tower\
505 North Lake Shore Drive\
Chicago, IL 60611\
Tel. 312/527-1550

**Contracting Task Manager:** Richard D. Fisher\
(408) 741-1287, FAX (408) 867-1289,\
e-mail: rd.fisher@worldnet.att.net

TABLE OF CONTENTS

1 introduction [1](#introduction)

2 Purpose and scope [2](#purpose-and-scope)

2.1 scope [2](#scope)

3 legal definitions and requirements
[3](#legal-definitions-and-requirements)

3.1 definItions [3](#definitions)

3.1.1 Federal Records [3](#federal-records)

3.1.2 Non-records [4](#non-records)

3.1.3 Record Copy [5](#record-copy)

3.1.4 Electronic Record [6](#electronic-record)

3.2 records management requirements
[6](#records-management-requirements)

4 analysis [8](#analysis)

4.1 Legal Requirements [8](#legal-requirements)

4.1.1 Records from Applicants [8](#records-from-applicants)

4.1.2 Records Created by the PTO [9](#records-created-by-the-pto)

4.1.3 Working Files Created by the PTO
[9](#working-files-created-by-the-pto)

4.2 Legal discovery [11](#legal-discovery)

4.3 disclosure under FOIA [11](#disclosure-under-foia)

5 SUGGESTED guidelines [13](#suggested-guidelines)

# introduction

The PTO is required by law to provide for the management of all records,
including electronic records, from the time or receipt or creation until
the end of the proscribed retention period, which can be for an extended
length of time, including permanent. The case files of registered
trademarks are retained by the PTO until two years after they expire or
are canceled unless they are selected for permanent retention, then they
are transferred to the National Archives and Records Administration
(NARA) six years after they expire or are cancelled for permanent
retention. The PTO has responsibility for the retention of issued patent
case files for 40 years, after which they are transferred to NARA for
permanent retention. Records in a patent or trademark case file can be
subject to legal discovery or a Freedom of Information Act (FOIA)
request at any time during their existence.

Under the current paper system, all documents received from the
applicant as well as all records created by the PTO that materially
relate to a patent or trademark application are preserved in the case
file. It is understood that, in addition to the record copy retained in
the case file, other documentary materials, such as notes or other
reference materials, may be retained for an unspecified period time, by
an examiner for instance, that are not part of the case file. All of
these records may be subject to legal discovery or a FOIA request.

With the PTO's plans and programs to move to electronic filing,
processing and management of patent and trademark applications, there is
a need for defining what electronic records should be retained in patent
and trademark electronic case files or file wrappers.

Section 2 of this report addresses the Purpose and Scope, Section 3
provides Legal Definitions and Requirements and Section 4 provides an
Analysis of the records that are candidates for the case file and the
legal areas that may generate a request. Section 5 suggests Guidelines
that could be applied to most effectively determine which records should
be committed to the case file and how to deal with documentary materials
that are not committed.

# Purpose and scope

The purpose of this report is define and analyze the legal requirements
and issues relating to which records should be retained in a case file,
as well as what to do with records that may be retained, yet are not
committed to the case file. Suggestions are offered regarding how the
disposition of case files and other documentary materials should be
managed.

## scope

While the focus of this report is on electronic patent and trademark
case files, the definitions, analysis and suggestions should equally
apply to traditional paper record case files. In addition to reviewing
legal definitions and requirements for managing records, the
requirements and issues related to legal discovery and FOIA are also
considered.

# legal definitions and requirements 

First, it is important to establish what is considered to be a "record"
within the laws and regulations of the Federal Government and to define
what is generally deemed to be the "record copy". In this overall
context it is also relevant to understand how Federal regulations define
and proscribe the handling of "working files" and "non-records."

The following are definitions provided by statutes and regulations
governing the definition of records for Federal agencies.

## definItions

### Federal Records

Documentary materials is a collective term for records and non-record
materials that refers to all media on which information is recorded,
regardless of the nature of the medium or the method or circumstances of
recording. (36 CFR §1220.14 General Definitions)

The point in time when documentary materials become a record is defined
in 36 CFR §1222.34 **Identifying Federal Records**:

\(b\) Record status. Documentary materials are records when they meet
both of the following conditions:\
\
(1) They are made or received by an agency of the United States
Government under Federal law or in connection with the transaction of
agency business; and\
\
(2) They are preserved or are appropriate for preservation as evidence
of agency organization and activities or because of the value of the
information they contain.

A Federal Record is defined in 44 USC §3301:

Records include all books, papers, maps, photographs, machine-readable
materials, or other documentary materials, regardless of physical form
or characteristics, *made or received* by an agency of the United States
Government under Federal law or *in connection with the transaction of
public business* and *preserved or appropriate for preservation by that
agency* or its legitimate successor *as evidence of the organization,
functions, policies, decisions, procedures, operations, or other
activities of the Government* or because of the informational value of
the data in them. Library and museum material made or acquired and
preserved solely for reference or exhibition purposes, *extra copies of
documents preserved only for convenience of reference*, and stocks of
publications and of processed documents *are not included*. (italicized
emphasis added)

Working files are also documentary materials that can be deemed
"appropriate for preservation" when their status meets the criteria set
forth in 36 CFR §1222.34:

\(c\) Working files and similar materials. Working files, such as
preliminary drafts and rough notes, and other similar materials shall be
maintained for purposes of adequate and proper documentation if:\
\
(1) They were circulated or made available to employees, other than the
creator, for official purposes such as approval, comment, action
recommendation, follow-up, or to communicate with agency staff about
agency business; and\
\
(2) They contain unique information, such as substantive annotations or
comments included therein, that adds to a proper understanding of the
agency's formulation and execution of basic policies, decisions, actions
or responsibilities.

###  Non-records

36 CFR §1222.34 defines the standards for agency recordkeeping
requirements. It states the importance of properly distinguishing
between records and non-record materials:

\(a\) *General.* To ensure that complete and accurate records are made
and retained in the Federal Government, it is essential that agencies
distinguish between records and nonrecord materials by the appropriate
application of the definition of records (see 44 U.S.C. § 3301 and 36
CFR § 1229.14) to agency documentary materials. Applying the definition
of records to most documentary materials created or received by agencies
presents few problems when agencies have established and periodically
updated recordkeeping requirements covering all media and all agency
activities at all levels and locations.

Certain types of documents and materials are not considered to meet the
definition of a record copy. As generally defined in 36 CFR §1222.34
(f):

Nonrecord materials are those Government-owned documentary materials
that do not meet the conditions of record status (per 36 CFR §1222.34
(b)) or that are specifically excluded from status as records by statute
(44 U.S.C. §3301) statutory definition of records (Section 3301 of
reference (d)) or that have been excluded from coverage by the
definition. Excluded materials are *extra copies of documents* *kept
only for reference*, stocks of publications and processed documents, and
library or museum materials intended solely for reference or exhibit.
(italicized emphasis added)

From the perspective of 44 U.S.C. §3301 as detailed above, a record must
meet the following tests:

-   Made or received in connection with the transaction of public
    business, and

-   Preserved or appropriate for preservation by that agency - - as
    *evidence* of the organization, functions, policies, decisions,
    procedures, operations or other activities, or because of the
    informational value of the date in them.

Otherwise it would be considered a non-record.

### Record Copy

In the field of records management, the record that is stored and
managed as evidence of activities or events of the PTO's patent and
trademark programs is referred to as the "record copy." In selected
regulations (e.g. 36 CFR §1234.22 (a)) there is also reference made to
an equivalent term, the "official file copy." Essentially, 44 USC §3301
defines *record copy* by defining what is to be considered a
*non-record*: "extra copies of documents preserved only for convenience
of reference . . are not included".

Also, working files are not considered a record copy unless they meet
the criteria delineated in 36 CFR §1222.34 (c).

### Electronic Record

An electronic record is defined within the context of a general record,
but with the added characteristic of being a digital representation or
in a form that only a computer can process.

As defined in 36 CFR §1234.2:

Electronic record means any information that is recorded in a form that
only a computer can process and that satisfies the definition of Federal
record in 44 USC § 3301.

36 CFR §1234.1 provides a definition regarding the scope of an
electronic record:

This part establishes the basic requirements related to the creation,
maintenance, use and disposition of electronic records. Electronic
records include numeric, graphic, and text information, which may be
recorded on any medium capable of being read by a computer and which
satisfies the definition of a record. This includes, but is not limited
to, magnetic media, such as tapes and disks; and optical disks. Unless
otherwise noted, these requirements apply to all electronic records
systems, whether on microcomputers, minicomputers, or main-frame
computers, regardless of storage media, in network or stand-alone
configurations. **. . .**

## records management requirements

The PTO is required by law to provide for the adequate management of all
records, including electronic records. The law also requires that the
integrity of all records be preserved over the full retention life, and
that the confidentiality of the records be protected, as required.

The 1997 PTO Comprehensive Records Schedule states that: "records
created and maintained in every office are critically important to
document the evidence of the functions, policies, decisions, procedures
and operations of the PTO. The disposition (retention, destruction, or
permanent maintenance) of these materials is governed by 44 USC 33 and
36 CFR 12. In part, the law states, '. . . records may not be removed
from Federal custody or destroyed without regard to the provisions of
the agency records schedule (SF 115) approved by the National Archives
and Records Administration (NARA) or the General Records Schedule (GRS)
issue by NARA'".

36 CFR §1220.34 requires each Federal agency to institute adequate
management controls of its records:

36 CFR § 1220.34. **Creation of records.** Adequate records management
controls over the creation of Federal agency records shall be instituted
to ensure that the agency functions are adequately and properly
documented. **. . .\
**

# analysis

This section analyzes the requirements regarding which records should be
made part of the electronic patent or trademark case file. The areas
addressed include legal requirements, legal discovery and disclosure
under FOIA.

## Legal Requirements

Based on the definition of a Federal record in Section 3.1.1 above, all
documentary materials that are received or created as part of the
process of filing, examining, issuing, registering, abandoning and
maintaining a patent or trademark application and, as such have a
material bearing on the decision to allow or not allow a patent or to
approve or reject a trademark, are required by law to be retained as a
record copy and committed to the electronic case file if they:

-   Were made or received in connection with the transaction of public
    business, and

-   Are appropriate for preservation by that agency - - as *evidence* of
    the organization, functions, policies, decisions, procedures,
    operations or other activities, or because of the informational
    value of the data in them.

### Records from Applicants

All incoming documents from applicants to the PTO, whether paper or
electronic, that are materially related to patent or trademark filing,
examination, issuance and maintenance processes are record copies
because they are evidence of transacted public business by the PTO and
also represent what an applicant would have considered to be their
record copy at the time of submission to the PTO.

### Records Created by the PTO

Documentary materials created by the PTO when finalized and communicated
to an applicant and/or otherwise stored to a patent or trademark file
wrapper because it is material to the filing, examination, issuance or
maintenance of a patent or trademark application is a "legal record
copy" because it is evidence of transacted public business.

### Working Files Created by the PTO

In general, is can be assumed that working files which start out as a
draft or rough as part of the examination process, for instance, will
eventually be put in final form and committed to the electronic file
wrapper as a record.

However, as part of an examination process, there may be "working
files", such as the drafts of Office Actions, correspondence or search
requests, and notes that were intentionally kept for personal use or
were, for whatever reason, not deleted from the location they are
stored.

These drafts and rough notes could potentially be considered as records
if they fit the criteria set forth in 36 CFR §1222.34, that they: "were
circulated or made available to employees other than the creator for
official purposes, [and]{.underline}" . . . "contain unique information
. . that adds to understanding of . . basic policies, decisions, actions
or responsibilities" (underlined emphasis added). If these two criteria
are applicable, then "working files" may be required to be retained,
potentially for the same period of time as the patent or trademark
electronic case file to which they relate, but, at a minimum, for a
period proscribed for such types of records.

However, the criteria in 36 CFR §1222.34 also could result in the
"working file" being a "non-record", if the examiner did not circulate
or make available the working files to other employees, but kept them
solely as his/her own reference. As such they *would not* be considered
a "record" under Federal regulations (36 CFR §1222.34 (f) states that
materials such as "extra copies of documents kept only for reference"
are considered non-records). As such, they would not be subject to
specific retention requirements.

A major concern regarding retention of "working files" that are not part
of the electronic file wrapper is that, while they are most likely not
required to be disclosed under the FOIA, they may be discoverable in a
legal proceeding.

## Legal discovery

According to the Federal Rule of Civil Procedure, Rule 34, anything file
or document that is represented in the form of a "data compilation" is
also discoverable under a request for production of documents in a legal
proceeding. Depending on how broadly the request for documents is
worded, it very likely could encompass any and all documents related to
a patent or trademark application, wherever they might reside, including
on the desktop PC of an examiner.

If a patent application is pending, Federal Rule of Civil Procedure
26(c)(7) authorizes a protective order to limit the disclosure of trade
secret information. However, this protective order will typically only
relate to the documentary materials that are trade secret and may not
cover other electronic materials that are being kept in the electronic
file wrapper or in the examiner's PC.

Another consideration is that working files or other documentary
materials retained by an examiner, for instance, could be held to
"represent the thought processes of the examiner" and, as such, are
privileged, and need not be produced. The success of such a claim of
privilege generally depends on the records involved and they material
bearing they may have on the litigation.

## disclosure under FOIA

Requests under FOIA are generally deemed to relate only to documentary
materials that are covered as "scheduled records" of the an agency.

As such, files that are retained for personal use or reference, such as
working files for personal reference or use, and that were not
circulated nor made available to other employees as noted in 36 CFR
§1222.34, will most likely be considered an exception under FOIA
requests.

Also, records that are considered trade secret or proprietary, such as
pending patent information, are not required to be produced under the
FOIA, so long as the condition of trade secret is explained in response
to the request.

Of the nine exemptions cited in The Freedom of Information Act, 5 U.S.C.
§552, the specific exceptions that may apply to patent and trademark
files are:

> \(b\) This section does not apply to matters that are---
>
> . . .
>
> \(3\) specifically exempted from disclosure by statute (other than
> section 552b of this title), provided that such statute (A) requires
> that the matters be withheld from the public in such a manner as to
> leave no discretion on the issue, or (B) establishes particular
> criteria for withholding or refers to particular types of matter to be
> withheld;
>
> \(4\) trade secrets and commercial or financial information obtained
> from a person and privileged or confidential;
>
> \(5\) inter-agency or intra-agency memorandums or letters which would
> not be available by law to a party other than an agency in litigation
> with the agency;
>
> . . .

Under exemptions (b)(3) and (b)(4) of the FOIA, pending patent records
and abandoned patents not referenced by an issued patent would be
considered exceptions by virtue of the confidentiality requirements
under 35 U.S.C. §122. **Confidential status of applications**, and 37
CFR §1.14. **Patent application preserved in secrecy,** and by virtue of
the fact that they contain trade secrets of the applicant.

# SUGGESTED guidelines

The following guidelines are offered as a means for meeting the legal
requirements and as a means of alleviating the potential impact of
potential legal discovery or FOIA requests:

1.  All incoming documentary materials from applicants to the PTO,
    whether paper or electronic, that are materially related to patent
    or trademark filing, examination, issuance and maintenance processes
    should be committed to the case file as soon as they have been
    received from the applicant.

2.  All documentary materials created by the PTO and communicated to the
    applicant (documents that are in final form) or that are created in
    final form as a result of any material communication with the
    applicant (such as telephone notes or e-mails), or other forms of
    communication, should be committed to the case file at the same time
    as they are communicated to the applicant or at the time they are
    finalized as a result of a communication with the applicant.

3.  Working files that meet the criteria stated under 36 CFR §1222.34 as
    requiring preservation as records (whether notes, draft versions of
    office actions or correspondence, drafts of documentary materials
    resulting from a communication with the applicant or drafts or
    non-final versions of documents used to maintain the case file)
    should be committed to the case file.

4.  Working files that *do not* qualify as requiring preservation as
    records under the criteria stated in 36 CFR §1222.34 (whether notes,
    draft versions of office actions or correspondence, drafts of
    documentary materials resulting from a communication with the
    applicant or drafts or non-final versions of documents used in
    maintaining the case file) may be committed to the case file at the
    discretion of the examiner or other PTO individual authorized to
    maintain the case file.

5.  Working files that do not qualify as requiring preservation as
    records under the criteria stated in 36 CFR §1222.34 (whether notes,
    draft versions of office actions or correspondence, drafts of
    documentary materials resulting from a communication with the
    applicant or drafts or non-final versions of documents used to
    maintain the case file), and *are not* committed to the case file,
    should be destroyed no later than at the time of issuance of the
    related patent, the abandonment of the related patent application,
    or upon registration of a trademark or disallowance of a trademark
    application.

6.  Also, as noted in the *Overall Plan for Managing Electronic Records*
    (Deliverable 98-03-5), it is also recommended that all metadata be
    encapsulated in the electronic case file for ease of retention
    management, vital records backup, migration and auditability. The
    metadata profiles recommended to be retained in the electronic case
    file are defined in the report entitled *Metadata Requirements for
    Long Term Access and Retention of Electronic Patent and Trademark
    Case Files*, Deliverable 98-03-10 dated February 26, 1999. They
    include: Case File profile, Case File Record profile, Use History
    profile, Copy profile, Reformat profile and Transfer profile.

Following these guidelines should assure that the contents of a patent
or trademark case file would contain as records: a) all documentary
materials that are required by regulations, and b) all records that are
deemed by an examiner, and others authorized to maintain a case file, to
be appropriate or important for preservation. Also, it would assure that
all documentary materials not deemed appropriate for preservation as
records would be destroyed and, therefore, not available for responding
to legal discovery or FOIA requests.

Should an examiner, or other person authorized to maintain a case file,
choose to preserve for personal reference, or continue to retain and
reference working files that do not qualify as requiring preservation
under the criteria stated in 36 CFR §1222.34 (whether notes, draft
versions of office actions or correspondence, drafts of documentary
materials resulting from a communication with the applicant or drafts or
non-final versions of documents used to maintain the case file), there
is a risk that these records could be required to be produced as part of
a legal discovery request.