MPEP § 724.04(a) — Materials Submitted in an Application Covered by 35 U.S.C. 122 (Annotated Rules)
§724.04(a) Materials Submitted in an Application Covered by 35 U.S.C. 122
This page consolidates and annotates all enforceable requirements under MPEP § 724.04(a), including statutory authority, regulatory rules, examiner guidance, and practice notes. It is provided as guidance, with links to the ground truth sources. This is information only, it is not legal advice.
Materials Submitted in an Application Covered by 35 U.S.C. 122
This section addresses Materials Submitted in an Application Covered by 35 U.S.C. 122. Primary authority: 35 U.S.C. 122. Contains: 11 statements.
Key Rules
Access to Patent Application Files (MPEP 101-106)
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.
Any materials submitted under MPEP § 724.02 in an application covered by 35 U.S.C. 122 will be treated in the following manner:
…
(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.
Any materials submitted under MPEP § 724.02 in an application covered by 35 U.S.C. 122 will be treated in the following manner:
…
(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.
Any materials submitted under MPEP § 724.02 in an application covered by 35 U.S.C. 122 will be treated in the following manner:
…
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.
Director Authority and Petitions (MPEP 1000)
Sealed Portions of Files
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.
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.
Third Party Access to Files (MPEP 103, 1134.01)
Any materials submitted under MPEP § 724.02 in an application covered by 35 U.S.C. 122 will be treated in the following manner:
…
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).
Any materials submitted under MPEP § 724.02 in an application covered by 35 U.S.C. 122 will be treated in the following manner:
…
(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.
Restrictions on Access to Application Files
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.
Fees for Third Party Access
Any materials submitted under MPEP § 724.02 in an application covered by 35 U.S.C. 122 will be treated in the following manner:
…
(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).
Citations
| Primary topic | Citation |
|---|---|
| Access to Patent Application Files (MPEP 101-106) Director Authority and Petitions (MPEP 1000) Fees for Third Party Access Restrictions on Access to Application Files Sealed Portions of Files Third Party Access to Files (MPEP 103, 1134.01) | 35 U.S.C. § 122 |
| Access to Patent Application Files (MPEP 101-106) Restrictions on Access to Application Files Sealed Portions of Files | 35 U.S.C. § 122(a) |
| Access to Patent Application Files (MPEP 101-106) Restrictions on Access to Application Files Sealed Portions of Files | 35 U.S.C. § 122(b)(1) |
| Access to Patent Application Files (MPEP 101-106) Restrictions on Access to Application Files Sealed Portions of Files | 37 CFR § 1.11 |
| Access to Patent Application Files (MPEP 101-106) Fees for Third Party Access | 37 CFR § 1.14 |
| Access to Patent Application Files (MPEP 101-106) Director Authority and Petitions (MPEP 1000) Third Party Access to Files (MPEP 103, 1134.01) | 37 CFR § 1.14(a)(1)(ii) |
| Access to Patent Application Files (MPEP 101-106) Restrictions on Access to Application Files Sealed Portions of Files | 37 CFR § 1.59 |
| Access to Patent Application Files (MPEP 101-106) Director Authority and Petitions (MPEP 1000) | 37 CFR § 1.59(b) |
| Access to Patent Application Files (MPEP 101-106) Director Authority and Petitions (MPEP 1000) Fees for Third Party Access Restrictions on Access to Application Files Sealed Portions of Files Third Party Access to Files (MPEP 103, 1134.01) | MPEP § 724.02 |
| Access to Patent Application Files (MPEP 101-106) Director Authority and Petitions (MPEP 1000) | MPEP § 724.05 |
Source Text from USPTO’s MPEP
This is an exact copy of the MPEP from the USPTO. It is here for your reference to see the section in context.
Official MPEP § 724.04(a) — Materials Submitted in an Application Covered by 35 U.S.C. 122
Source: USPTO724.04(a) Materials Submitted in an Application Covered by 35 U.S.C. 122 [R-10.2019]
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.