February 2010 Issue

Rule Review

Rule 56 requires disclosure to the USPTO of information material to the patentability of a pending claim.  That obligation is the same for information that is a trade secret, proprietary, or under a protective order.  An applicant should assume that such materials will be made of record in the file and be made public.  Nonetheless, the USPTO has procedures in place for applicants to submit confidential materials under seal and the Office to handle these materials.  If the applicant submits such materials and timely files a petition to expunge, and the Office finds the information not material to patentability, the materials will be expunged.  Otherwise, the materials will be made part of the public record upon issuance of the patent.  See M.P.E.P. § 724 (8th ed., rev. 6, Sept. 2007) for details.