Patent attorneys practicing before the U.S. Patent and Trademark Office (“USPTO”) can find themselves in a situation where they must balance an order or instruction to maintain confidentiality of certain documents with their professional duty to disclose information material to patentability to the USPTO.  Information potentially material to patentability may include litigation documents, e.g., admissions made during depositions, trade secrets, or documents produced under a protective order.  Although, attorneys can, in certain instances, redact the confidential information from documents prior to submission to the USPTO,^[1] this may not be not a viable option if the confidential information itself is potentially material to patentability.^[2]  In such cases, attorneys can consider filing an information disclosure statement (“IDS”) under § 724 of the Manual of Patent Examining Procedure (“MPEP”), informally known as filing an “IDS under seal.”

Submitting an IDS under seal can be an effective avenue to comply with the duty of disclosure while maintaining the confidentiality of the disclosed information.  For example, if the USPTO determines that the documents submitted under seal are not material to the patentability of the claims, the documents can be withheld from publication.  A petition to expunge under 37 CFR § 1.59 can request that the confidential documents found to be immaterial be expunged from the patent application’s record.

The process is more complex for information deemed to be material.  In such a case, the confidential information can be referenced, if not published in whole or in part in the text of the Office Action. Thus, it is of paramount importance to establish clear lines of communication with the USPTO at the time of IDS submission to ensure that the confidential documents are handled properly.

To this end, attorneys may consider contacting the Examiner handling the application prior to filing the IDS to inform them of the incoming confidential documents.  Attorneys should also consider the possibility of abandonment early in the submission process. When an application is abandoned, regardless of the decision on materiality, the confidential documents can be expunged from the application’s record if a petition to expunge is filed.^[3] To the extent the information was not made public in an Office Action, such an abandonment would be the only avenue to prevent the publication of confidential information deemed material to patentability. Notably, there is always a risk that the confidential information may publish even if all precautions are taken. It is vital that attorneys strictly adhere to the USPTO’s procedures relating to submission of an IDS under seal to ensure all confidential documents are properly handled.  In contrast to an ordinary IDS submission, which are often filed online, an IDS under seal cannot be filed online.  Rather, an IDS under seal must be either mailed to the USPTO or delivered in person to the USPTO’s Customer Window.^[4]

Moreover, when submitting litigation documents, only client confidential documents should be submitted. Attorneys should be careful not to submit any third-party confidential information in the IDS. When preparing the IDS under seal, Form PTO-1449 and every document cited therein must be printed, labeled, and placed in a sealed envelope prior to submission to the USPTO.^[5]  Additional information may be required depending on the type of confidential information, for example, documents subject to protective orders must also include the name of the relevant tribunal.^[6]  Section 724 of the Manual of Patent Examining Procedure provides further details on the type of information required for each specific document.  Each document and the envelope itself must list all information necessary to clearly identify the pending application.^[7]

If attorneys wish to request that the confidential information be expunged from the application record if deemed immaterial or during abandonment, attorneys must submit a petition to expunge under § 1.59 and the fee set forth in § 1.17(g).  The petition to expunge should include the following:

• A statement clearly identifying the documents to be expunged from the application file wrapper without disclosing the confidential details therein;
• A statement clearly identifying the type of documents to be expunged (i.e., whether the documents are trade secrets, proprietary, and/or subject to a protective order) and confirmation that the information has not been previously made public;
• An affirmative statement confirming the petitioner will hold on to the documents for the entire life of any patent that issues from the subject application; and
• A statement confirming that the petition to expunge is submitted by, or on behalf of, the party in interest.^[8]

Under § 724.06 of the MPEP, a petition to expunge should be held in abeyance until the issuance of an allowance, Ex parte Quayle action, or a notice of abandonment, at which point the USPTO will decide on the petition.^[9]  While a petition to expunge may be filed at any point during the pendency of the application,^[10] in practice, the USPTO generally will deny the petition to expunge if received prior to issuance of an allowance, Ex parte Quayle action, or abandonment of the application.  However, in either case, petitions must be received while the application is in the Technology Center and before it is transferred to the Publishing Division.^[11] Thus, attorneys should submit the petition prior to payment of the issue fee to minimize the risk of dismissal of the petition for untimely submission.

Filing an IDS under seal can be complex and any error can result in the inadvertent publication of client confidential information. Thus, it is imperative that attorneys carefully review the USPTO requirements in § 724 of the Manual of Patent Examining Procedure and timely submit all required documents and fees when submitting an IDS under seal.

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