MPEP § 724.04(c) — Materials Submitted in Reexamination File Open to the Public Under 37 CFR 1.11(d) (Annotated Rules)

§724.04(c) Materials Submitted in Reexamination File Open to the Public Under 37 CFR 1.11(d)

USPTO MPEP version: BlueIron's Update: 2025-12-31

This page consolidates and annotates all enforceable requirements under MPEP § 724.04(c), 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 Reexamination File Open to the Public Under 37 CFR 1.11(d)

This section addresses Materials Submitted in Reexamination File Open to the Public Under 37 CFR 1.11(d). Primary authority: 37 CFR 1.11(d). Contains: 8 requirements and 1 permission.

Key Rules

Topic

Notice of Intent to Issue Reexamination Certificate (NIRC)

3 rules
StatutoryRequiredAlways
[mpep-724-04-c-361b0823543fffcbb9dc2381]
Petition to Expunge Required Before NIRC Mailing
Note:
A petition to expunge proprietary materials must be filed before or shortly after the mailing of a Notice of Intent to Issue Reexamination Certificate.

Any materials, i.e., information, submitted under MPEP § 724.02 in a reexamination file open to the public under 37 CFR 1.11(d) will be treated in the following manner (A) 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.

Jump to MPEP Source · 37 CFR 1.11(d)Notice of Intent to Issue Reexamination Certificate (NIRC)Reexamination CertificateConclusion of Ex Parte Reexamination
StatutoryRequiredAlways
[mpep-724-04-c-26242a8a9451b03ff6c18ab4]
Examiner Reviews Petition to Expunge Before NIRC
Note:
The examiner must review the reexamination file for a petition to expunge before mailing a Notice of Intent to Issue Reexamination Certificate.

Any materials, i.e., information, submitted under MPEP § 724.02 in a reexamination file open to the public under 37 CFR 1.11(d) will be treated in the following manner:

(B) 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.

Jump to MPEP Source · 37 CFR 1.11(d)Notice of Intent to Issue Reexamination Certificate (NIRC)SNQ CriteriaConclusion of Ex Parte Reexamination
StatutoryRequiredAlways
[mpep-724-04-c-046b00d510f1fb2dc7a2d3b9]
Petition to Expunge Before NIRC Mailing Required
Note:
A petition to expunge must be filed before or shortly after the mailing of the Notice of Intent to Issue Reexamination Certificate for materials submitted under MPEP § 724.02 to remain non-public.

Any materials, i.e., information, submitted under MPEP § 724.02 in a reexamination file open to the public under 37 CFR 1.11(d) will be treated in the following manner:

(E) 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).

Jump to MPEP Source · 37 CFR 1.11(d)Notice of Intent to Issue Reexamination Certificate (NIRC)Reexamination CertificateConclusion of Ex Parte Reexamination
Topic

Material Information Definition

3 rules
StatutoryRequiredAlways
[mpep-724-04-c-6c6775c227d3eb64f012a1bd]
Petition to Expunge Non-Material Information
Note:
If all submitted information is found not material to patentability, the petition will be granted and the information expunged.

Any materials, i.e., information, submitted under MPEP § 724.02 in a reexamination file open to the public under 37 CFR 1.11(d) will be treated in the following manner:

(D) 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.

Jump to MPEP Source · 37 CFR 1.11(d)Material Information DefinitionMateriality StandardDuty of Disclosure
StatutoryPermittedAlways
[mpep-724-04-c-8176b1e8b3a571d9f9a1b4e1]
Petition to Expunge Non-Material Information
Note:
If a petition to expunge submitted information is partially material, the non-material portion can be separated and removed.

Any materials, i.e., information, submitted under MPEP § 724.02 in a reexamination file open to the public under 37 CFR 1.11(d) will be treated in the following manner:

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.

Jump to MPEP Source · 37 CFR 1.11(d)Material Information DefinitionMateriality StandardDuty of Disclosure
StatutoryRequiredAlways
[mpep-724-04-c-e9de23975e2f32dd808b4d7c]
Petition to Expunge Non-Material Information
Note:
If materials submitted under MPEP § 724.02 are found partially material, the petition to expunge non-material information will be dismissed and the patent owner given an opportunity to separate the material from the non-material information for expungement.

Any materials, i.e., information, submitted under MPEP § 724.02 in a reexamination file open to the public under 37 CFR 1.11(d) will be treated in the following manner:

See item (C) above.

Jump to MPEP Source · 37 CFR 1.11(d)Material Information DefinitionMateriality StandardDuty of Disclosure
Topic

Substantial New Question of Patentability

2 rules
StatutoryRequiredAlways
[mpep-724-04-c-1a0f26e9d6ff1fc48ad28df7]
Sealed Information Not Publicly Available Until Materiality Determined
Note:
Information submitted under MPEP § 724.02 will be kept separate from the reexamination file and not publicly available until a determination is made regarding its materiality to patentability.

Any materials, i.e., information, submitted under MPEP § 724.02 in a reexamination file open to the public under 37 CFR 1.11(d) will be treated in the following manner (A) 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.

Jump to MPEP Source · 37 CFR 1.11(d)Substantial New Question of PatentabilityEx Parte ReexaminationNotice of Intent to Issue Reexamination Certificate (NIRC)
StatutoryRequiredAlways
[mpep-724-04-c-a1f1aaa9c910ec2eafdcab16]
Examiner Determines Materiality of Submitted Information
Note:
The examiner will assess whether any information submitted in a reexamination file is relevant to patentability.

Any materials, i.e., information, submitted under MPEP § 724.02 in a reexamination file open to the public under 37 CFR 1.11(d) 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.

Jump to MPEP Source · 37 CFR 1.11(d)Substantial New Question of PatentabilityNotice of Intent to Issue Reexamination Certificate (NIRC)SNQ Criteria
Topic

PTAB Jurisdiction

1 rules
StatutoryRequiredAlways
[mpep-724-04-c-1557987c63c178be856b3a38]
Petitions to Expunge Submitted Materials
Note:
This rule outlines the process for submitting and expunging proprietary materials in a reexamination file open to public view, including requirements for petitions and conditions under which information may be sealed or released.
Any materials, i.e., information, submitted under MPEP § 724.02 in a reexamination file open to the public under 37 CFR 1.11(d) will be treated in the following manner:
  • (A) 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.
  • (B) 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.
  • (C) 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.
  • (D) 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. See item (C) above.
  • (E) 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.
  • (F) Any petition to expunge a portion or all of the submitted information under 37 CFR 1.59(b) will be treated in accordance with MPEP § 724.05.
Jump to MPEP Source · 37 CFR 1.11(d)PTAB JurisdictionEx Parte ReexaminationMaterial Information Definition
Topic

Ex Parte Reexamination

1 rules
StatutoryRequiredAlways
[mpep-724-04-c-ef9cf78a65c48ed9d4bbb9c7]
Sealed Materials Requirement for Reexamination
Note:
Materials submitted under MPEP § 724.02 in a reexamination proceeding must be sealed from public view until a determination is made on their materiality to patentability.

Any materials, i.e., information, submitted under MPEP § 724.02 in a reexamination file open to the public under 37 CFR 1.11(d) will be treated in the following manner (A) 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.

Jump to MPEP Source · 37 CFR 1.11(d)Ex Parte ReexaminationNotice of Intent to Issue Reexamination Certificate (NIRC)Reexamination Certificate
Topic

Reexamination Certificate

1 rules
StatutoryRequiredAlways
[mpep-724-04-c-c1d757af52d99037667af45e]
Petition to Expunge Must Be Timely
Note:
A petition to expunge must be filed before the reexamination certificate printing process begins; otherwise, materials submitted under MPEP § 724.02 will be released to the public.

Any materials, i.e., information, submitted under MPEP § 724.02 in a reexamination file open to the public under 37 CFR 1.11(d) will be treated in the following manner (A) 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.

Jump to MPEP Source · 37 CFR 1.11(d)Reexamination CertificateDenial – No SNQ RaisedConclusion of Ex Parte Reexamination
Topic

PTAB Contested Case Procedures

1 rules
StatutoryRequiredAlways
[mpep-724-04-c-1c4c7357c600412068eb5cca]
Petition to Seal Protected Material in Reexamination File
Note:
If materials submitted under MPEP § 724.02 are later found protected, a petition to seal must be filed with the requisite fee.

Any materials, i.e., information, submitted under MPEP § 724.02 in a reexamination file open to the public under 37 CFR 1.11(d) will be treated in the following manner:

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.

Jump to MPEP Source · 37 CFR 1.11(d)PTAB Contested Case ProceduresNotice of Intent to Issue Reexamination Certificate (NIRC)Reexamination Certificate
Topic

Director Authority and Petitions (MPEP 1000)

1 rules
StatutoryRequiredAlways
[mpep-724-04-c-087359f1dac8b23e72f3d7b3]
Petition to Expunge Under 37 CFR 1.59(b) Treated According to MPEP § 724.05
Note:
This rule states that any petition to expunge submitted information under 37 CFR 1.59(b) in a reexamination file open to the public will be handled according to MPEP § 724.05.

Any materials, i.e., information, submitted under MPEP § 724.02 in a reexamination file open to the public under 37 CFR 1.11(d) will be treated in the following manner:

(F) Any petition to expunge a portion or all of the submitted information under 37 CFR 1.59(b) will be treated in accordance with MPEP § 724.05.

Jump to MPEP Source · 37 CFR 1.11(d)Director Authority and Petitions (MPEP 1000)Ex Parte Reexamination

Citations

Primary topicCitation
Director Authority and Petitions (MPEP 1000)
Ex Parte Reexamination
Material Information Definition
Notice of Intent to Issue Reexamination Certificate (NIRC)
PTAB Contested Case Procedures
PTAB Jurisdiction
Reexamination Certificate
Substantial New Question of Patentability
37 CFR § 1.11(d)
Notice of Intent to Issue Reexamination Certificate (NIRC)
PTAB Contested Case Procedures
PTAB Jurisdiction
37 CFR § 1.182
Ex Parte Reexamination
Notice of Intent to Issue Reexamination Certificate (NIRC)
PTAB Jurisdiction
Reexamination Certificate
Substantial New Question of Patentability
37 CFR § 1.59
Director Authority and Petitions (MPEP 1000)
PTAB Jurisdiction
37 CFR § 1.59(b)
Director Authority and Petitions (MPEP 1000)
Ex Parte Reexamination
Material Information Definition
Notice of Intent to Issue Reexamination Certificate (NIRC)
PTAB Contested Case Procedures
PTAB Jurisdiction
Reexamination Certificate
Substantial New Question of Patentability
MPEP § 724.02
Director Authority and Petitions (MPEP 1000)
PTAB Jurisdiction
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.

BlueIron Last Updated: 2025-12-31