• Duty of disclosure applies during post-grant proceedings such as Reissue and Reexamination
  • While procedures exist to protect submitted confidential information under seal and for later expungement, there is a risk of exposure of the confidential information

The requirement for disclosure, candor, and good faith between an applicant/patent owner and the U.S. Patent and Trademark Office (USPTO) serves an important public interest. Succinctly, each individual associated with the filing and prosecution of a patent application has a duty of candor and good faith in dealing with the Office, which includes a duty to disclose to the Office all information known to that individual to be material to patentability. See 37 C.F.R. §§ 1.56 and 1.555. “Material to patentability” is defined by both of these sections as:

(b) Under this section, 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.

In Reissue and Reexamination proceedings, it is likely that the patent owner may have discovered additional information that could be considered material to patentability subsequent the patent’s grant. For example, often the patents subject to Reissue and/or Reexamination are involved in litigation and material information may have been uncovered during discovery. Usually submission of the new information via an information disclosure statement (IDS) is sufficient. However, in some situations, the new information may be secret or confidential. The question then becomes one of how, procedurally, do the individuals bound by the duty of disclosure before the USPTO submit secret information (i.e., information subject to trade secret, proprietary constraints, or legal protective orders) for consideration by CRU examiners? The answer may be found in the MPEP, although not in the usual Reissue, Reexamination, Supplemental Examination chapters.

MPEP 724 outlines the procedures for handling submission of secret information to the USPTO, including the procedures for Reissue and Reexamination. Because the materials are not initially available for public viewing, they should not be submitted electronically via Patent Center. Paper copies of the information should be submitted in a clearly and properly labeled envelope or container, and be accompanied by a transmittal letter that also states 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 C.F.R §1.59 and fee therefor (37 C.F.R §1.17(g)) to expunge the information, if found not to be material to patentability, should accompany the envelope or container when filed, and must be filed prior to a notice of allowance in a Reissue or NIRC in Reexamination.

The CRU 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. If not material, the petition to expunge will be granted and the submitted information will be expunged or not entered into in the electronic file wrapper.

If any portion of 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 or Reexamination file and open to the public, unless the original submission is also accompanied by a redacted version redacting the protected material and an additional petition under 37 C.F.R. §1.182  and fee therefore (37 C.F.R §1.17(f)) requesting that the unredacted version be sealed and replaced with the redacted version in the event the petition to expunge is denied.

Finally, in the event that, despite following the procedures outlined in MPEP 724, protected materials are made viewable in the record, or the materials were submitted prior to becoming protected, or protected materials were inadvertently submitted, the materials may be redacted and/or expunged from view via a granted petition under 37 C.F.R. §1.182 and fee therefore (37 C.F.R §1.17(f)).

Of note, the authors know of one example where these duties could not be reconciled with a court’s confidentiality rules. And the inability to submit required confidential information based on the court not granting permission caused the patent owner to have to abandon the patent. So patent owners need good reexamination and litigation counsel who know how to carefully navigate the various rules of the forums they are litigating in and ensure they have avenues to meet all their requirements or risk losing their patents.

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