MPEP § 724 — MPEP § 724
Current through: 2022-07-01

724-Trade Secret, Proprietary, and Protective Order Materials 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Manual of Patent Examining Procedure 

 Chapter 0700 

 Section 724 
 

 
 
 
 
 
 724 Trade Secret, Proprietary, and Protective Order
 Materials [R-08.2012]
 

 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 
 

 (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 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 [R-08.2012]

 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 [R-01.2024]
 

 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 material to patentability, 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 Service Window. See MPEP § 501 , subsection
 III for information regarding hand-delivery of papers.
 

 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.
 

 

 
 724.03 Types of Trade Secret, Proprietary, and/or Protective Order
 Materials Submitted Under MPEP § 724.02 [R-11.2013]
 

 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 FR 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 1.130 , 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 Handling of Materials Submitted Under MPEP
 § 724.02 [R-07.2015]
 

 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 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. 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 material to patentability, the
 petition to expunge will be granted and the materials will be expunged. If the materials
 are found to be material to patentability, 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 material to 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. 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. 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 [R-10.2019]
 

 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 material to patentability. 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 material to 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 material to patentability.
 

 (D) If any portion or all of the submitted information is found to
 be material to patentability, 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 all of the submitted information is found
 not to be material to patentability, 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) [R-07.2022]
 

 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 § 724.02 
 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. 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
 material to patentability.
 

 (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 material to
 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 material to patentability.
 

 (D) If any portion or all of the submitted information is found to
 be material to patentability, 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. Where a submission containing protected material
 is found to be material to patentability, it still may be possible to redact
 the submission to eliminate the protected material while retaining the
 important material (e.g., where a confidential identifying number, such as a
 serial number or social security number, is included, which is not needed for
 the context of the submission). If so, the redacted version may be submitted to
 the Office along with a petition under 37 CFR 1.182 requesting
 that the unredacted version be sealed and be replaced with the redacted
 version.
 

 (E) If all of the submitted information is found
 not to be material to patentability, 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) [R-08.2012]
 

 Any materials, i.e., information, 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) Any materials, i.e., information, properly submitted under
 MPEP §
 724.02 in a reexamination proceeding will be sealed
 from public view. 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 material to
 patentability. A petition to expunge ( 37 CFR 1.59 ) should
 accompany the submission of proprietary materials, and in any event, must be
 filed prior to, or shortly after (i.e., in time to be addressed before the
 reexamination proceeding enters the reexamination certificate printing
 process), the mailing of a Notice of Intent to Issue Reexamination Certificate
 (NIRC). If the petition to expunge is not filed in time to be addressed before
 the reexamination proceeding enters the reexamination certificate printing
 process, or the petition is filed, and denied/dismissed, then the materials
 submitted under MPEP § 724.02 will be released to the public with
 any other papers in the reexamination file.
 

 (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 material to patentability. 
 

 (C) If any portion or all of the submitted information is found to
 be material to patentability, 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. Where a submission containing protected material is
 found to be material to patentability, it still may be possible to redact the
 submission to eliminate the protected material while retaining the important
 material (e.g., where a confidential identifying number, such as a serial
 number or social security number, is included, which is not needed for the
 context of the submission). If so, the redacted version may be submitted to the
 Office along with a petition under 37 CFR 1.182 requesting
 that the unredacted version be sealed and be replaced with the redacted
 version.
 

 (D) If all of the submitted information is found
 not to be material to patentability, the petition to
 expunge will be granted and the information expunged. If a portion of the
 submitted information is found not to be material to
 patentability, and a portion is found to be material to patentability, the
 petition to expunge will be dismissed, and patent owner (or the requester, in
 limited instances where appropriate) provided with an opportunity to separate
 the material and non-material information, such that the non-material
 information can be expunged. See item (C) above.
 

 (E) If a petition to expunge is not filed prior to, or shortly
 after (i.e., in time to be addressed before the reexamination proceeding enters
 the reexamination certificate printing process), 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) . In the event materials have already been made of
 record by a party, and it is subsequently determined that the materials are
 protected, the proper petition to submit would be a petition to seal the
 protected material under 37 CFR 1.182 , with the
 requisite fee.
 

 (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 [R-01.2024]
 
 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 material to patentability. If
 the information is found to be material to patentability, any petition to expunge the
 information will be denied. Any such petition to expunge information submitted under
 MPEP §
 724.02 should 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 enforceability 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, or shortly after (i.e., in time
 to be addressed before the reexamination proceeding enters the reexamination
 certificate printing process), 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, or shortly after (i.e., in time to be
 addressed before the reexamination proceeding enters the reexamination certificate
 printing process), 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. 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. However, if the papers are correctly matched with the application
 serial number given in an electronic filing via the USPTO patent electronic filing
 system, the information is not considered to have been submitted in the incorrect
 application even if the identifying information in the heading of the papers is
 directed toward a different application.
 

 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 [R-07.2015]
 

 
 37 CFR 1.59 Expungement of information or copy of papers in application file. 

 
 (a) 
 
 (1) Information in an application will not be expunged,
 except as provided in paragraph (b) of this section or §
 41.7(a) or § 42.7(a) of this title.
 

 (2) Information forming part of the original disclosure
 ( i.e., written specification including the claims,
 drawings, and any preliminary amendment present on the filing date of the
 application) will not be expunged from the application file. 
 

 
 

 (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 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 .
 

 ¶ 7.204 Petition Under 37 CFR 1.59(b) To Expunge Information: Decision
 Held in Abeyance
 
In re Application of [1] :Appl. No.: [2] : RESPONSE TO PETITIONFiled: [3] : UNDER 37 CFR 1.59 For: [4] :
 This is a response to the petition
 under 37 CFR
 1.59(b) , filed [5] , to expunge information from the above
 identified application.
 

 The decision on the petition will be
 held in abeyance until allowance of the application or mailing of an Ex parte
 Quayle action or a Notice of Abandonment, at which time the petition will be
 decided.
 

 Petitioner requests that a document
 entitled [6] , filed [7] , be expunged from the record. Petitioner
 states either: (A) that the information contains trade secret material, proprietary material
 and/or material that is subject to a protective order which has not been made public; or (B)
 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, and the information has not
 otherwise been made public. The petition fee set forth in 37 CFR 1.17(g) has been
 paid.
 

 The decision on the petition is held
 in abeyance because prosecution on the merits is not closed. Accordingly, it is not
 appropriate to make a final determination of whether or not the material requested to be
 expunged is “material,” with “materiality” being defined as any information which the examiner
 considers as being important to a determination of patentability of the claims. Thus, the
 decision on the petition to expunge must be held in abeyance at this time.
 

 During prosecution on the merits, the
 examiner will determine whether or not the identified document is considered to be “material.”
 If the information is not considered by the examiner to be material, the information will be
 removed from the official file.
 

 Examiner Note:
 
 1. A Technology Center Director
 decides this petition only if the information was submitted either pursuant to
 MPEP §
 724.02 or in an information disclosure
 statement.
 

 2. The petition should be sent to
 the Office of Petitions for decision if: 
 the information was not
 submitted either pursuant to MPEP § 724.02 or in an information
 disclosure statement. Information which is part of the original disclosure
 (specification including any claims, drawings, and any preliminary amendment present
 on the filing date of the application) cannot be expunged under 37 CFR 1.59 .
 Some papers entered into the application file, e.g., arguments made in an amendment,
 may be expunged under appropriate circumstance, however, the petition should be sent
 to the Office of Petitions for decision; or
 

 the petition is also
 accompanied by a petition under 37 CFR 1.183 requesting waiver of
 one of the requirements explicitly set forth in 37 CFR 1.59 (e.g., requesting
 expungement of part of the original disclosure).
 
 
 

 3. This decision is printed with
 the USPTO letterhead.
 

 4. In bracket 6, clearly identify
 the document which petitioner requests to expunge. For example, refer to the author and
 title of the document.
 

 5. Mail with PTO-90C cover
 sheet.
 
 
 

 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.
 

 ¶ 7.205 Petition Under 37 CFR 1.59(b) To Expunge Information
 Granted
 
In re Application of [1] :Appl. No.: [2] : DECISION ON PETITIONFiled: [3] : UNDER 37 CFR 1.59 For: [4] :
 This is a decision on the petition
 under 37 CFR
 1.59(b) , filed [5] , to expunge information from the above
 identified application.
 

 The petition is
 granted .
 

 Petitioner requests that a document
 entitled [6] , filed [7] , be expunged from the record. Petitioner
 states that either (A) that the information contains trade secret material, proprietary
 material and/or material that is subject to a protective order which has not been made public;
 or (B) 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, and the information has not
 otherwise been made public. The petition fee set forth in 37 CFR 1.17(g) has been
 paid.
 

 The information in question has been
 determined by the undersigned to not be material to the examination of the instant
 application.
 

 Applicant is required to retain the
 expunged material(s) for the life of any patent which issues on the above-identified
 application.
 

 The expunged material has been removed
 from the official file.
 

 Enclosure: [8] 

 Examiner Note:
 
 1. A Technology Center Director
 decides this petition only if the information was submitted either pursuant to
 MPEP §
 724.02 or in an information disclosure statement. Furthermore,
 a petition to expunge may not be granted unless the application has been allowed or is
 abandoned, or an Ex Parte Quayle action has been
 mailed.
 

 2. The petition should be sent to
 the Office of Petitions for decision if: 
 the information was not
 submitted either pursuant to MPEP § 724.02 or in an information
 disclosure statement. Information which is part of the original disclosure
 (specification including any claims, drawings, and any preliminary amendment present
 on the filing date of the application) cannot be expunged under 37 CFR 1.59 .
 Some papers entered into the application file, e.g., arguments made in an amendment,
 may be expunged under appropriate circumstance, however, the petition should be sent
 to the Office of Petitions for decision; or
 

 the petition is also
 accompanied by a petition under 37 CFR 1.183 requesting waiver of
 one of the requirements explicitly set forth in 37 CFR 1.59 (e.g., requesting
 expungement of part of the original disclosure).
 
 
 

 3. This decision is printed with
 the USPTO letterhead.
 

 4. In brackets 6 and 8, clearly
 identify the expunged document. For example, refer to the author and title of the
 document.
 

 5. Mail with PTO-90C cover
 sheet.
 
 
 

 ¶ 7.206 Petition Under 37 CFR 1.59(b) To Expunge Information
 Dismissed
 
In re Application of [1] :Appl. No.: [2] : DECISION ON PETITIONFiled: [3] : UNDER 37 CFR 1.59 For: [4] :
 This is a decision on the petition
 under 37 CFR
 1.59(b) , filed [5] , to expunge information from the above
 identified application.
 

 The petition is
 dismissed .
 

 Petitioner requests that a document
 entitled [6] , filed [7] , be expunged from the record. 
 

 “Materiality” is defined as any
 information which the examiner considers as being important to a determination of
 patentability of the claims.
 

 The petition is deficient because:
 [8] 

 Examiner Note:
 
 1. A Technology Center Director decides this petition only if the
 information was submitted either pursuant to MPEP § 724.02 or in an information
 disclosure statement. However, the petition should not be granted until the application
 has been allowed or abandoned, or an Ex parte Quayle action has been
 mailed. 
 

 2. The petition should be sent to
 the Office of Petitions for decision if: 
 the information was not submitted either pursuant to
 MPEP §
 724.02 or in an information disclosure statement.
 Information which is part of the original disclosure (specification including any
 claims, drawings, and any preliminary amendment present on the filing date of the
 application) cannot be expunged under 37 CFR 1.59 . Some papers entered
 into the application file, e.g., arguments made in an amendment, may be expunged
 under appropriate circumstance, however, the petition should be sent to the Office of
 Petitions for decision; or
 

 the petition is also
 accompanied by a petition under 37 CFR 1.183 requesting waiver of
 one of the requirements explicitly set forth in 37 CFR 1.59 (e.g., requesting
 expungement of part of the original disclosure).
 
 
 

 3. This decision is printed with
 the USPTO letterhead.
 

 4. In bracket 6, clearly identify
 the document which petitioner requests to expunge. For example, refer to the author and
 title of the document.
 

 5. This form paragraph must be
 followed with one or more of form paragraphs 7.207 through 7.213 .
 
 
 

 ¶ 7.207 Petition To Expunge, Conclusion, Lacks Fee

 the petition was not accompanied by the required fee under 37 CFR1.17(g).

 

 ¶ 7.208 Petition to Expunge, Conclusion, Material to Determination of Patentability

 the information that petitioner requests to expunge is considered to be material to the determination of patentability because
 [1] .
 

 Examiner Note:

 In bracket 1, provide an explanation of basis for conclusion that information is material to the determination of patentability.

 

 ¶ 7.209 Petition To Expunge, Conclusion, Information Made Public

 the information has been made public. [1] 

 Examiner Note:

 In bracket 1, provide explanation of basis for conclusion that information has been made public. 

 

 ¶ 7.210 Petition to Expunge, Conclusion, No Commitment to Retain Information

 the petition does not contain a commitment on the part of petitioner to retain the information to be expunged for the period
 of any patent with regard to which such information is submitted.
 

 

 ¶ 7.211 Petition to Expunge, Conclusion, No Clear Statement That Information is Trade Secret, Proprietary, and/or Subject to Protective
 Order, or that Submission Was Unintentional
 

 the petition does not contain a clear statement that the information requested to be expunged is either: (1) a trade secret,
 proprietary, and/or subject to a protective order; or (2) was unintentionally submitted and 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. [1] 

 Examiner Note:

 In bracket 1, indicate whether any such statement was provided and, if so, explain why such statement is not clear.

 

 ¶ 7.212 Petition to Expunge, Conclusion, No Clear Identification of Information to be Expunged

 the petition does not clearly identify the information requested to be expunged. [1] 

 Examiner Note:

 In bracket 1, explain why the identification of the information requested to be expunged is not clear.

 

 ¶ 7.213 Petition to Expunge, Conclusion, No Statement That Petition Is Submitted By, or on Behalf of, Party in Interest Who Originally
 Submitted the Information
 

 the petition does not contain a statement that the petition is being submitted by, or on behalf of, the party in interest
 who originally submitted the information.
 

 

 

 [top] 

 

 

 
 

 
 

 

 

 

 
 
 
 701-Statutory Authority for Examination 

 702-Requisites of the Application 
 702.01-Obviously Informal Cases 

 
 

 703-[Reserved] 

 704-Search and Requirements for Information 
 704.01-Search 

 704.02-704.09-[Reserved] 

 704.10-Requirements for Information 

 704.11-What Information May Be Required 
 704.11(a)-Examples of Information Reasonably Required 

 704.11(b)-When May a Requirement for Information Be Made 

 
 

 704.12-Replies to a Requirement for Information 
 704.12(a)-Relationship of Requirement for Information to Duty of Disclosure 

 704.12(b)-What Constitutes a Complete Reply 

 704.12(c)-Treatment of an Incomplete Reply 

 
 

 704.13-Time Periods for Reply 

 704.14-Making a Requirement for Information 
 704.14(a)-Format of the Requirement 

 704.14(b)-Examiner’s Obligation Following Applicant’s Reply 

 704.14(c)-Petitions to Requirements Under 37 CFR 1.105 

 704.14(d)-Relationship to Information Disclosure Statements 

 
 

 
 

 705-Patentability Reports 
 705.01-Instructions re Patentability Reports 
 705.01(a)-Nature of P.R., Its Use and Disposal 

 705.01(b)-Sequence of Examination 

 705.01(c)-Counting and Recording P.R.s 

 705.01(d)-[Reserved] 

 705.01(e)-Limitation as to Use 

 705.01(f)-Interviews With Applicants 

 
 

 
 

 706-Rejection of Claims 
 706.01-Contrasted With Objections 

 706.02-Rejection on Prior Art 
 706.02(a)-[Reserved] 
 706.02(a)(1)-[Reserved] 

 706.02(a)(2)-[Reserved] 

 
 

 706.02(b)-[Reserved] 
 706.02(b)(1)-[Reserved] 

 706.02(b)(2)-[Reserved] 

 
 

 706.02(c)-[Reserved] 
 706.02(c)(1) -[Reserved] 

 706.02(c)(2)-[Reserved] 

 
 

 706.02(d)-[Reserved] 

 706.02(e)-[Reserved] 

 706.02(f)-[Reserved] 
 706.02(f)(1)-[Reserved] 

 706.02(f)(2)-[Reserved] 

 
 

 706.02(g)-[Reserved] 

 706.02(h)-[Reserved] 

 706.02(i)-[Reserved] 

 706.02(j)-[Reserved] 

 706.02(k)-[Reserved] 

 706.02(l)-[Reserved] 
 706.02(l)(1)-[Reserved] 

 706.02(l)(2)-[Reserved] 

 706.02(l)(3)-[Reserved] 

 
 

 706.02(m)-[Reserved] 

 706.02(n)-[Reserved] 

 
 

 706.03-Rejections Not Based on Prior Art 
 706.03(a)-[Reserved] 

 706.03(b)-[Reserved] 

 706.03(c)-[Reserved] 

 706.03(d)-[Reserved] 

 706.03(e)-[Reserved] 

 706.03(f) - 706.03(j)-[Reserved] 

 706.03(k)-[Reserved] 

 706.03(l) - 706.03(n)-[Reserved] 

 706.03(o)-[Reserved] 

 706.03(p) - 706.03(r)-[Reserved] 

 706.03(s)-[Reserved] 

 706.03(t)-[Reserved] 

 706.03(u)-[Reserved] 

 706.03(v)-[Reserved] 

 706.03(w)-[Reserved] 

 706.03(x)-[Reserved] 

 706.03(y)-[Reserved] 

 
 

 706.04-Rejection of Previously Allowed Claims 

 706.05-Rejection After Allowance of Application 

 706.06-Rejection of Claims Copied From Patent 

 706.07-Final Rejection 
 706.07(a)-Final Rejection, When Proper on Second Action 

 706.07(b)-Final Rejection, When Proper on First Action 

 706.07(c)-Final Rejection, Premature 

 706.07(d)-Final Rejection, Withdrawal of, Premature 

 706.07(e)-Withdrawal of Final Rejection, General 

 706.07(f)-Time for Reply to Final Rejection 

 706.07(g)-Transitional After-Final Practice 

 706.07(h)-Request for Continued Examination (RCE) Practice 

 
 

 
 

 707-Examiner’s Letter or Action 
 707.01-Primary Examiner Indicates Action for New Assistant 

 707.02-Applications Up for Third Action and 5-Year Applications 

 707.03‑707.04-[Reserved] 

 707.05-Citation of References 
 707.05(a)-Copies of Cited References 

 707.05(b)-Citation of Related Art and Information by Applicants 

 707.05(c)-Order of Listing 

 707.05(d)-Reference Cited in Subsequent Actions 

 707.05(e)-Data Used in Citing References 

 707.05(f)-Non-Patent Documents Having a Lengthy Citation 

 707.05(g)-Incorrect Citation of References 

 
 

 707.06-Citation of Decisions, Orders Memorandums, and Notices 

 707.07-Completeness and Clarity of Examiner’s Action 
 707.07(a)-Complete Action on Formal Matters 

 707.07(b) - 707.07(c)-[Reserved] 

 707.07(d)-Language To Be Used in Rejecting Claims 

 707.07(e)-Note All Outstanding Requirements 

 707.07(f)-Answer All Material Traversed 

 707.07(g)-Piecemeal Examination 

 707.07(h)-Notify of Inaccuracies in Amendment 

 707.07(i)-Each Claim To Be Mentioned in Each Office Action 

 707.07(j)-State When Claims Are Allowable 

 707.07(k)-Numbering Paragraphs 

 707.07(l)-Comment on Examples 

 
 

 707.08-Reviewing and Initialing by Assistant Examiner 

 707.09-Signing by Primary or Other Authorized Examiner 

 707.10-Entry 

 707.11-Date 

 707.12-Mailing 

 707.13-Returned Office Action 

 
 

 708-Order of Examination 
 708.01-List of Special Cases 

 708.02-Petition To Make Special 
 708.02(a)-Accelerated Examination 

 708.02(b)-Prioritized Examination 

 708.02(c)-Patent Prosecution Highway Program 

 
 

 708.03-Examiner Tenders Resignation 

 
 

 709-Suspension of Action 
 709.01-Overlapping Applications by Same Applicant or Owned by Same Assignee 

 
 

 710-Period for Reply 
 710.01-Statutory Period 
 710.01(a)-Statutory Period, How Computed 

 
 

 710.02-Shortened Statutory Period and Time Limit Actions Computed 
 710.02(a)-[Reserved] 

 710.02(b)-Shortened Statutory Period: Situations in Which Used 

 710.02(c)-Specified Time Limits: Situations in Which Used 

 710.02(d)-Difference Between Shortened Statutory Periods for Reply and Specified Time Limits 

 710.02(e)-Extension of Time 

 
 

 710.03-[Reserved] 

 710.04-Two Periods Running 
 710.04(a)-Copying Patent Claims 

 
 

 710.05-Period Ending on Saturday, Sunday, or a Federal Holiday 

 710.06-Situations When Reply Period Is Reset or Restarted 

 
 

 711-Abandonment of Patent Application 
 711.01-Express or Formal Abandonment 

 711.02-Failure To Take Required Action During Statutory Period 
 711.02(a)-Insufficiency of Reply 

 711.02(b)-Special Situations Involving Abandonment 

 711.02(c)-Termination of Proceedings 

 
 

 711.03-Reconsideration of Holding of Abandonment; Revival 
 711.03(a)-Holding Based on Insufficiency of Reply 

 711.03(b)-Holding Based on Failure To Reply Within Period 

 711.03(c)-Petitions Relating to Abandonment 

 711.03(d)-Examiner’s Statement on Petition To Set Aside Examiner’s Holding 

 
 

 711.04-Public Access to Abandoned Applications 
 711.04(a)-Date of Abandonment 

 711.04(b)-Ordering of Patented and Abandoned Files 

 711.04(c)-Notifying Applicants of Abandonment 

 
 

 711.05-Letter of Abandonment Received After Application Is Allowed 

 711.06-Abstracts, Abbreviatures, and Defensive Publications 
 711.06(a)-Citation and Use of Abstracts, Abbreviatures, and Defensive Publications as References 

 
 

 
 

 712-[Reserved] 

 713-Interviews 
 713.01-General Policy, How Conducted 

 713.02-Interviews Prior to First Official Action 

 713.03-Interview for “Sounding Out” Examiner Not Permitted 

 713.04-Substance of Interview Must Be Made of Record 

 713.05-Interviews Prohibited or Granted, Special Situations 

 713.06-No Inter Partes Questions Discussed Ex Parte 

 713.07-Exposure of Other Cases 

 713.08-Demonstration, Exhibits, Models 

 713.09-Interviews Between Final Rejection and Notice of Appeal 

 713.10-Interview Preceding Filing Amendment Under 37 CFR 1.312 

 
 

 714-Amendments, Applicant’s Action 
 714.01-Signatures to Amendments 
 714.01(a)-Unsigned or Improperly Signed Amendment 

 714.01(b)-[Reserved] 

 714.01(c)-Signed by Attorney or Agent Not of Record 

 714.01(d)-Amendment Signed by Applicant but Not by Attorney or Agent of Record 

 714.01(e)-Amendments Before First Office Action 

 
 

 714.02-Must Be Fully Responsive 

 714.03-Amendments Not Fully Responsive, Action To Be Taken 
 714.03(a)-Supplemental Amendment 

 
 

 714.04-Claims Presented in Amendment With No Attempt To Point Out Patentable Novelty 

 714.05-Examiner Should Immediately Review 

 714.06-[Reserved] 

 714.07-Amendments Not in Permanent Ink 

 714.08-714.09-[Reserved] 

 714.10-Claims Added in Excess of Claims Previously Paid For 

 714.11-Amendment Filed During Interference Proceedings 

 714.12-Amendments and Other Replies After Final Rejection or Action 

 714.13-Amendments and Other Replies After Final Rejection or Action, Procedure Followed 

 714.14-Amendments After Allowance of All Claims 

 714.15-Amendment Received in Technology Center After Mailing of Notice of Allowance 

 714.16-Amendment After Notice of Allowance, 37 CFR 1.312 
 714.16(a)-Amendments Under 37 CFR 1.312, Copied Patent Claims 

 714.16(b)-Amendments Under 37 CFR 1.312 Filed With a Motion Under 37 CFR 41.208 

 714.16(c)-Amendments Under 37 CFR 1.312, Additional Claims 

 714.16(d)-Amendments Under 37 CFR 1.312, Handling 

 714.16(e)-Amendments Under 37 CFR 1.312, Entry in Part 

 
 

 714.17-Amendment Filed After the Period for Reply Has Expired 

 714.18-Entry of Amendments 

 714.19-List of Amendments, Entry Denied 

 714.20-List of Amendments Entered in Part 

 714.21-Amendments Inadvertently Entered, No Legal Effect 

 714.22-714.24-[Reserved] 

 714.25-Discourtesy of Applicant or Attorney 

 
 

 715-Swearing Behind a Reference — Affidavit or Declaration Under 37 CFR 1.131(a) 
 715.01-37 CFR 1.131(a) Affidavits Versus 37 CFR 1.132 Affidavits 
 715.01(a)-Reference Is a Patent or Published Application Naming Different Inventive Entity With at Least One Common Inventor 

 715.01(b)-Reference and Application Have Common Assignee 

 715.01(c)-Reference Is Publication of Inventor’s Own Invention 

 715.01(d)-Activities Applied Against the Claims 

 
 

 715.02-How Much of the Claimed Invention Must Be Shown, Including the General Rule as to Generic Claims 

 715.03-Genus-Species, Practice Relative to Cases Where Predictability Is in Question 

 715.04-Who May Make Affidavit or Declaration Under 37 CFR 1.131(a); Formal Requirements of Affidavits and Declarations 

 715.05-U.S. Patent or Application Publication Claiming Same Invention 

 715.06-[Reserved] 

 715.07-Facts and Documentary Evidence 
 715.07(a)-Diligence 

 715.07(b)-Interference Testimony Sometimes Used 

 715.07(c)-Acts Relied Upon Must Have Been Carried Out in This Country or a NAFTA or WTO Member Country 

 715.07(d)-Disposition of Exhibits 

 
 

 715.08-Decided by Primary Examiner 

 715.09-Timely Presentation 

 715.10-Review of Affidavit or Declaration for Evidence of Prior Public Use or Sale or Failure to Disclose Best Mode 

 
 

 716-Affidavits or Declarations Under 37 CFR 1.132 and Other Evidence Traversing Rejections 
 716.01-Generally Applicable Criteria 
 716.01(a)-Objective Evidence of Nonobviousness 

 716.01(b)-Nexus Requirement and Evidence of Nonobviousness 

 716.01(c)-Probative Value of Objective Evidence 

 716.01(d)-Weighing Objective Evidence 

 
 

 716.02-Allegations of Unexpected Results 
 716.02(a)-Evidence Must Show Unexpected Results 

 716.02(b)-Burden on Applicant 

 716.02(c)-Weighing Evidence of Expected and Unexpected Results 

 716.02(d)-Unexpected Results Commensurate in Scope With Claimed Invention 

 716.02(e)-Comparison With Closest Prior Art 

 716.02(f)-Advantages Disclosed or Inherent 

 716.02(g)-[Reserved] 

 
 

 716.03-Commercial Success 
 716.03(a)-Commercial Success Commensurate in Scope With Claimed Invention 

 716.03(b)-Commercial Success Derived From Claimed Invention 

 
 

 716.04-Long-Felt Need and Failure of Others 

 716.05-Skepticism of Experts 

 716.06-Copying 

 716.07-Inoperability of References 

 716.08-Utility and Operability of Applicant’s Disclosure 

 716.09-Sufficiency of Disclosure 

 716.10-Attribution Affidavit or Declaration to Overcome Rejection Under Pre-AIA 35 U.S.C. 102 or 103 

 
 

 717-Prior Art Exceptions under AIA 35 U.S.C. 102(b)(1) and (2) 
 717.01-Affidavit or Declaration Under 37 CFR 1.130 
 717.01(a) -Declarations or Affidavits under 37 CFR 1.130(a) – Attribution 
 717.01(a)(1) -Evaluation of Declarations or Affidavits under 37 CFR 1.130(a) 

 
 

 717.01(b) -Declarations or Affidavits under 37 CFR 1.130(b) – Prior Public Disclosure 
 717.01(b)(1) -Evaluation of Declarations or Affidavits under 37 CFR 1.130(b) 

 717.01(b)(2) -Determining if the Subject Matter of the Intervening Disclosure is the Same as the Subject Matter of the Inventor–Originated
 Prior Public Disclosure 

 
 

 717.01(c) -Who May Make Affidavit or Declaration; Formal Requirements of Affidavits and Declarations 

 717.01(d)-U.S. Patent or Application Publication Claiming Same Invention 

 717.01(e) -Passed Upon (or Decided by) by Primary Examiner 

 717.01(f) -Seasonable (or Timely) Presentation 

 
 

 717.02 -Prior Art Exception for Commonly Owned or Joint Research Agreement Subject Matter under AIA 35 U.S.C. 102(b)(2)(C) 
 717.02(a) -Invoking the Prior Art Exception under 35 U.S.C. 102(b)(2)(C) 

 717.02(b) -Evaluating Whether the Prior Art Exception under AIA 35 U.S.C. 102(b)(2)(C) is Properly Invoked 

 717.02(c) -Examination Procedure With Respect to the Prior Art Exception under AIA 35 U.S.C. 102(b)(2)(C) 

 717.02(d) -Form Paragraphs With Respect to the Prior Art Exception under AIA 35 U.S.C. 102(b)(2)(C) 

 
 

 
 

 718-Affidavit or Declaration to Disqualify Commonly Owned Patent as Prior Art, 37 CFR 1.131(c) 

 719-File Wrapper 
 719.01-Papers in Image File Wrapper 

 719.02-Residence of Inventor Changed 

 719.03-Classification During Examination 

 719.04-Index of Claims 

 719.05-Field of Search 

 
 

 720-Public Use Proceedings 

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 724-Trade Secret, Proprietary, and Protective Order Materials 
 724.01-Completeness of the Patent File Wrapper 

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

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

 724.04-Office Treatment and Handling of Materials Submitted Under MPEP § 724.02 
 724.04(a)-Materials Submitted in an Application Covered by 35 U.S.C. 122 

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

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

 
 

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

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

 
 

 

 

 
 

 
 
 

 
 

 

 
 
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 03/09/2026 20:49:44