Q) Trade Secret Question (MPEP 700, Trade Secret)

by patentbar on May 15, 2007 · 41 comments

in Exam Questions


Question on Trade secret, Proprietary, protective order materials. It seems the answer is easily found in MPEP 724.

724 Trade Secret, Proprietary, and Protective Order Materials
[…]
That 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.

On 8/10/2007 the trade secret question related to what happens to the trade secret information in reexam if the Examiner finds it material to the patentability of the invention, and what if there is/or isn’t a request to expunge the info. see MPEP 724.04

Any materials 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) >Materials submitted under MPEP § 724.02 will only be released to the public with any other papers in the reexamination file if no petition to expunge (37 CFR 1.59) was filed prior to the mailing of a Notice of Intent to Issue Reexamination Certificate (NIRC), or if a petition to expunge was filed and the petition was denied.< 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 important to a reasonable examiner in deciding whether or not a claim is patentable. (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 important to a reasonable examiner in deciding whether or not a claim is patentable. (C) If any portion or all of the submitted information is found important to a reasonable examiner in deciding whether or not a claim is patentable, **>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. (D) If any portion or all of the submitted information is found not to be important to a reasonable examiner in deciding whether or not a claim is patentable,>the petition to expunge will be granted and the information expunged.< (E) >If a petition to expunge is not filed prior to 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).<

{ 41 comments… read them below or add one }

1 Art WilliamsNo Gravatar October 6, 2009 at 2:48 pm

What is the public’s access to proprietary information in the time period between publication and allowance, if a request to expunge has been filed?

Thanks, Art Williams

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2 IrishNo Gravatar June 9, 2010 at 5:05 pm

I had a trade secret question on 6/7. I don’t remember the specifics. Basically the question dealt with someone trying to get a patent on something where they were worried about trade secrets. The answers dealt with what would have to be part of the permanent file. I don’t remember the answer exactly but it was pretty obvious. Something like the examiner would either disclose everything even if not pertinent to the patent or the examiner would disclose nothing, even if pertinent to the patent.

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3 AdamANo Gravatar September 13, 2010 at 11:45 am

Same question as Irish on Sept. 12, 2010. Applicant send in information in envelope and filed a petition to expunge.

The question was asked in the negative (Which one does not comply with USPTO rules and regulations?) A. I B. II C. III D. IV E. I, II, and III

I chose the answer that stated that the the materials would remain in the envelope if the examiner found them necessary in analyzing the patentability, and thus would never become part of the file. (IV)

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4 ENo Gravatar November 25, 2011 at 6:31 pm

repeat 11/22/11

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5 RodneyNo Gravatar January 25, 2011 at 5:24 pm

had a question that mentioned trade secrets today on my exam. The question was really about what happens to the information submitted in a sealed envelop (MPEP 724.04) during Reexam

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6 VeNo Gravatar January 27, 2011 at 7:37 pm

Had a question similar to Rodney’s today. The question had to do with trade secret in reexam. I didn’t like any of the answers because as stated in the MPEP, if the examiner relies on the info to show invention is patentable, than info is disclosed to the public. None of the answers had that – they were a bit confusing. Maybe Beta question?

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7 ELSNo Gravatar March 7, 2011 at 12:20 pm

Got the same question as Rodney and Ve yesterday. I don’t remember being very confident about any one of the answers.

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8 Benjamin DachNo Gravatar March 13, 2011 at 12:31 am

Hey ELS and Rodney,

Do you remember ANY of the answers for the trademark question? Do you remember the nature of the question?

I’m taking the patent bar on April 4th (last day before they change it to include new material) and I would love any help possible.

Thanks!

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9 patenttipsNo Gravatar March 17, 2011 at 3:32 pm

This is what I think:

If no petition –> becomes public

If petition + important to patentability —> becomes public

If petition + not important to patentability –> DOES NOT become public

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10 gregmacdNo Gravatar March 16, 2013 at 3:51 pm

Do you mean “If no petition –> becomes public” only if material to patentability?

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11 OverworkkedNo Gravatar April 28, 2011 at 1:19 pm

VARIANT on 4/27/2011 E8R8:

Generally as noted in the facts, Trade Secret stuff submitted in Re-Exam. The answers are rather complex, tricky, and misleading.

Possible answers:

A. The information should be relevant but NOT support patentability (very tricky, but TRUE straight out of MPEP somewhere)
B. something confusing
C. something tricky
D. something with double negatives
E. The examiner determines that the stuff is relevant/important to patentability but the stuff will stay in the envelope. (Probably FALSE)

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12 jacquiegardnerNo Gravatar May 3, 2011 at 7:01 pm

I got this question today too. I have no idea what I answered.

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13 MFP8055No Gravatar May 5, 2011 at 9:50 am

I got the trade secret question on 5/4 (yesterday). Had to do with the sealed envelope and reissue. Looked all over 724.02 for something clear with no luck. I went with the material being made public if it was material to patentability. It didn’t help me. Lots of PCT, 101, 103 stuff on the test.

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14 SarahNo Gravatar May 18, 2011 at 3:56 pm

Got this today 5/18/11.

My variant was a reexamination question, and it was also “all of these are in accord to PTO procedure EXCEPT” question.

The choices were all sort of almost right. One said “absent a petition, if material wasn’t material to patentability, it would not be made of record.”

I thought you had to petition? But the wrong thing (and thus the CORRECT answer) was obvious:
“An item submitted in envelope that is determined to be material to patentability will NOT be made of record and will stay in the envelope.”

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15 maggieNo Gravatar October 20, 2011 at 5:08 pm

Yes! I think I got this one.

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16 AxoNo Gravatar July 1, 2011 at 10:26 am

Got a Trade Secrect question 6/28/11 involving TS material sent in an envelope. The question was a bit confusing (not worded simply such as, ‘if the info is material to patentability, it becomes part of the record’) and I had to look up the answer. The question was along the lines of what happens to the envelope once the material is found to be not important to patentability, but did not state whether there was a specific request to expunge.

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17 sgwNo Gravatar July 12, 2011 at 3:59 pm

I got this on 6/2.
I reviewed in USPTO my question similar to AdamsA and AdamA’s answer is correct because of MPEP 724.04.

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18 BigBadVoodoDaddyNo Gravatar July 26, 2011 at 6:30 pm

Got the same on as sarah. Keep an eye on the choices, they can be a bit confusing with all the negatives. It is not necessary to submit material favorable to patentability. but if it is material to patentability – it will be made public.

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19 BobNo Gravatar August 3, 2011 at 2:02 am

Got this on 8/2/11

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20 DanielNo Gravatar August 3, 2011 at 11:10 am

Got this one 7/29/2011, phrased exactly as above. Which is INCORRECT –> it’s material and stays in the envelope.

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21 NickNo Gravatar September 7, 2011 at 4:59 pm

Got this 9/7/11. Same wording.

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22 maggieNo Gravatar October 18, 2011 at 6:53 pm

Trade secret in envelope / reexam question.

What happens to the trade secret information in an marked envelope identified as a trade secret in a reexam if the Examiner finds it material to the patentability of the invention? Will the trade secret information become part of the public/published file?

Answer I chose the answer that stated that the the materials would remain in the envelope, and thus would never become part of the public file. 

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

Information which is considered by the party submitting the same to be either trade secret material or proprietary material, 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”

Upon receipt of the envelope or container, the Office will place the envelope or container in an artifact FOLDER if the application is an Image File Wrapper (IFW) application. If the application is maintained in paper, the confidential or proprietary information will be retained in the envelope or container.

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23 maggieNo Gravatar October 24, 2011 at 4:03 pm

This answer was confirmed by BEN at VA

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24 BethanyNo Gravatar October 22, 2011 at 5:51 pm

Got this one today 10/22/11

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25 JamecamNo Gravatar October 30, 2011 at 10:49 pm

I got this question on 10/29/2011.

The question asked “all of the following are in accordance with the MPEP except:”

The correct answer was the one which suggested that submissions which are material to patentability would remain out of the public patent file (because it is not what would happen).

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26 Mambo5No Gravatar January 10, 2012 at 11:11 am

MPEP 724.04 sez that any info that is material to patentability will be made public (envelope/petition or not). Sorry, I’m pretty sure maggie and BEN at VA are wrong.

That makes Jamecam right.

I think patenttips comment is right on target, covers all possibilities.

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27 BagelmanNo Gravatar January 20, 2012 at 12:01 pm

On the exam as of 11/18/12.

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28 BagelmanNo Gravatar January 20, 2012 at 12:01 pm

Sorry, I meant 1/18/12

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29 RemandedNo Gravatar January 20, 2012 at 7:37 pm

Saw this trade secret fact pattern 20 January 2012.

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30 KerstinNo Gravatar March 18, 2012 at 5:30 pm

Any current thoughts on whether the Trade Secret info in the envelope would be public or not based on Mambo 5’s comment above?

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31 KerstinNo Gravatar March 18, 2012 at 5:32 pm

I think any trade secret info if it is material will be public, thus accessible.

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32 SolNo Gravatar April 6, 2012 at 3:18 pm

Just a note, pay attention to TIME, when will TS material to patentability become of record and public? Sure they are open to the public when the patent issure, certificate of reexam issue. But before that, the Examiner need to make a determination on TS’ materiality to patentability, and the TS is still secret at that time. After a yes decision made by the Examiner, it is going to become public thereafter upon issurance.

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33 TheGhostOfBilskiNo Gravatar April 6, 2012 at 5:26 pm

Agreed with Kerstin, Mambo#5, and Patenttips above. The trade secret info will be made available in the file if “it is found material to patentability.” This would become publicly available upon patent issuance. Various scenarios available under MPEP 724 et seq.

“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." Inter alia, MPEP 724.04.

Trade secret materials will only stay in the envelope (and thus not available to the public) if a petition to expunge is filed, and the info is not "material to patentability"

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34 PatentGrrlNo Gravatar July 3, 2012 at 11:20 am

Although all of you are stating the rule correctly, I think the issue lies in the call of the question. It’s an “except” question, which means the answer is the option that is false. So the answer saying it will *not* become public if found to be material to patentability is the false answer, and thus the correct one.

35 GDBNo Gravatar April 19, 2012 at 7:01 pm

Got trade secret question about REEXAMINATION on 19/04/12

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36 CRBNo Gravatar November 9, 2012 at 12:01 am

Does the answer change if it is a reexamination?

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37 Churning Away NoMoreNo Gravatar July 3, 2012 at 8:03 pm

Just like GDB, I got a trade secret question about Reexamination on 06/30/2012

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38 MT40No Gravatar August 1, 2012 at 10:32 pm

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 patentabilitymaterial to patentabilitymaterial to< patentability, the petition to expunge will be granted and the materials expunged.

CFR § 1.11 Files open to the public.

(c)All requests for reexamination for which all the requirements of § 1.510 or § 1.915 have been satisfied will be announced in the Official Gazette. Any reexaminations at the initiative of the Director pursuant to § 1.520 will also be announced in the Official Gazette. The announcement shall include at least the date of the request, if any, the reexamination request control number or the Director initiated order control number, patent number, title, class and subclass, name of the inventor, name of the patent owner of record, and the examining group to which the reexamination is assigned.

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39 DudeNo Gravatar August 20, 2012 at 5:37 pm

Had this one today.

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40 Wishful ThinkingNo Gravatar September 25, 2012 at 3:38 pm

Had this on 9/24/12.

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41 ZNo Gravatar March 31, 2013 at 3:02 pm

Got the reexamination variant on 3/30/13. Answer was in MPEP 724.04(c).

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