724.04(a) Materials Submitted in an Application Covered by 35 U.S.C. 122 [R-10.2019]

Created On
byChhabra Law Firm

Any materials submitted under MPEP § 724.02 in an application covered by 35 U.S.C. 122 will be treated in the following manner:

  • (A) The submitted material will be maintained in the original envelope or container (clearly marked “Not Open To The Public”) and will not be publicly available until a determination has been made as to whether or not the information is material to patentability. Prior to publication, an original application is not available to the public under 35 U.S.C. 122(a). After publication of the application under 35 U.S.C. 122(b)(1), where 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.
  • (B) If the application is to be abandoned, prior to the mailing of a 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 a petition to expunge has been filed, irrespective of whether the materials are found to be material to patentability, the petition to expunge will be granted and the materials expunged. If no petition to expunge has been filed, the materials will be available to the public under 37 CFR 1.14(a)(1)(ii) or (a)(1)(iv).
  • (C) If the application is being allowed, prior to the mailing of a notice of allowability, the examiner will review the patent application file and determine if a petition to expunge is in the application 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.
  • (D) 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 become a part of the file history (and scanned, if the application is an Image File Wrapper (IFW) application), which upon issuance of the application as a patent would become available to the public.
  • (E) 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.
  • (F) If a petition to expunge is not filed prior to the mailing of the notice of allowability, the materials submitted under MPEP § 724.02 will be released to the public upon the issuance of the application as a patent and upon the filing of a request and the appropriate fee (37 CFR 1.14).
  • (G) Any petition to expunge the submitted information or any portion thereof under 37 CFR 1.59(b) will be treated in accordance with MPEP § 724.05.