Are there any limitations on the types of files an opposing party can access in a contested case?

This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.

Yes, there are limitations on the types of files an opposing party can access in a contested case. According to MPEP 2307.02, access is ordinarily limited to specific categories of records:

• The application file for an involved patent
• An involved application
• An application for which a party has been accorded benefit under subpart E of 37 CFR 41

The MPEP explicitly states: “Access and copies will ordinarily only be authorized for the following records: (1) The application file for an involved patent; (2) An involved application; and (3) An application for which a party has been accorded benefit under subpart E of this part.”

It’s important to note that this access is distinct from public access and is specifically granted for the purposes of the contested case. Access to other types of records may be more restricted and would likely require additional justification or special authorization from the Board.