What options are available if only a portion of submitted information is found to be material to patentability?

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Source: FAQ (MPEP-Based) BlueIron Update: 2024-09-10 10 Rules 5 Related FAQs 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. When only a portion of submitted information is found to be material to patentability in a reexamination, there are options available to protect non-material information. According to MPEP § 724.04(c) : “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.” This means that the patent owner or requester may be able to separate the material and non-material information, allowing for the expungement of the non-material portion while retaining the material information in the public record. Related Rules from the Manual of Patent Examining Procedure 10 rules Collapse Inventors Must Disclose Material Information MPEP 724 Inventors Must Disclose Material Information MPEP 724 Material Information for Patentability MPEP 724 Material Information Must Be Disclosed to Office MPEP 724 Permitted Material Information Must Be Disclosed MPEP 724 Required Duty to Disclose Material Information During Reexamination MPEP 724 Submission of Trade Secrets Must Not Disclose Material Information MPEP 724 Recommended Establishing Prima Facie Case for Unpatentability MPEP 724 Permitted Trade Secrets Must Not Be Considered During Examination MPEP 724 Recommended Trade Secrets and Proprietary Information Submission MPEP 724 Required Other Related FAQs 5 FAQs Collapse What happens if a reissue application is abandoned with submitted materials under MPEP § 724.02? What is the pro...