Patent owners face a dilemma when they are involved in reexamination proceedings with concurrent patent litigation. They may become aware of potentially material information during litigation that is covered by a protective order. Yet they have a duty to the USPTO to disclose information known to be material regardless of the source of such information.
To avoid violation of the protective order, the USPTO provides a mechanism for submission of protective order materials under seal pursuant to MPEP §§ 724.02 and 724.04(c) with a petition to expunge the submitted information. In accordance with MPEP guidelines, information subject to a protective order, must be filed in a sealed, clearly labeled, envelope or container. Each document or item must be clearly labeled as a document “Subject To Protective Order.” If the item or document is “Subject to Protective Order” the proceeding, including the tribunal, must be set forth on each document or item. 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.
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.
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.
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.
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.
It is preferable that the petition to expunge be submitted upon filing of the protective order information under seal. 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.
Finally, practitioners should keep in mind that when such protective order materials are voluminous, as is usually the case, the petitioned review of materiality at the time of NIRC can be time consuming for the Office. Therefore, to avoid delay in printing of the reexamination certificate practitioners should consider seeking a de-designation of such materials via court order, where feasible.