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
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- 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).<
{ 28 comments… read them below or add one }
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
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.
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)
repeat 11/22/11
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
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?
Got the same question as Rodney and Ve yesterday. I don’t remember being very confident about any one of the answers.
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!
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
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)
I got this question today too. I have no idea what I answered.
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.
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.”
Yes! I think I got this one.
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.
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.
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.
Got this on 8/2/11
Got this one 7/29/2011, phrased exactly as above. Which is INCORRECT –> it’s material and stays in the envelope.
Got this 9/7/11. Same wording.
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.
This answer was confirmed by BEN at VA
Got this one today 10/22/11
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).
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.
On the exam as of 11/18/12.
Sorry, I meant 1/18/12
Saw this trade secret fact pattern 20 January 2012.