24 - Expungement of papers

Deciding Office: Office of Petitions;

Petitions to expunge information not submitted pursuant to MPEP § 724.02 or as part of an Information Disclosure Statement (IDS) are decided by the Office of Petitions.

The criteria for a petition for expungement of papers are set forth in 37 CFR 1.59 and MPEP § 724.05

In general, these are the steps for filing a petition for expungement of papers:

  • To expunge information unintentionally submitted in application:

A petition under 37 CFR 1.59(b) to expunge information unintentionally submitted in an application may be filed provided that:

(A) the Office can effect such return prior to the issuance of any patent on the application in issue;

(B) it is stated that the information submitted was unintentionally submitted and the failure to obtain its return would cause irreparable harm to the party who submitted the information or to the party in interest on whose behalf the information was submitted;

(C) the information has not otherwise been made public;

(D) there is a commitment on the part of the petitioner to retain such information for the period of any patent with regard to which such information is submitted;

(E) it is established to the satisfaction of the Director that the information to be returned is not material information under 37 CFR 1.56; and

(F) the petition fee as set forth in 37 CFR 1.17(g) is submitted.

Fees:

For fees due, please consult the current USPTO fee schedule on the Fees and payment page for codes 1463/2463/3463 (Large Entity/Small Entity/Micro Entity) under the Patent Petition Fees.

How to file:

This petition may be filed using any of these delivery methods.

  • To expunge information submitted in incorrect application:

The grant of such a petition will be governed by the factors enumerated above in regard to the expungement of information unintentionally submitted in an application. Where the Office can determine the correct application file that the papers were actually intended for, based on identifying information in the heading of the papers (e.g., application number, filing date, title of invention and inventor(s) name(s)), the Office will transfer the papers to the correct application file for which they were intended without the need of a petition. However, if the papers are correctly matched with the application serial number given in an electronic filing via EFS-WEB, the information is not considered to have been submitted in the incorrect application even if the identifying information in the heading of the papers is directed toward a different application.

Fees:

For fees due, please consult the current USPTO fee schedule on the Fees and payment page for codes 1463/2463/3463 (Large Entity/Small Entity/Micro Entity) under the Patent Petition Fees.

How to file:

This petition may be filed using any of these delivery methods.

  • To expunge information forming part of the original disclosure:

A petition to expunge a part of the original disclosure must be filed under 37 CFR 1.183, since such a request requires a waiver of the requirements of 37 CFR 1.59(a). The petition must explain why justice requires waiver of the rules to permit the requested material to be expunged. It should be noted that petitions to expunge information which is a part of the original disclosure, such as the specification and drawings, will ordinarily not be favorably entertained. The original disclosures of applications are scanned for record keeping purposes. Accordingly, the grant of a petition to expunge information which is part of the original disclosure would require that the USPTO record of the originally filed application be changed, which may not be possible.

Fees:

For fees due, please consult the current USPTO fee schedule on the Fees and payment page for codes 1462/2462/3462 (Large Entity/Small Entity/Micro Entity) under the Patent Petition Fees.

How to file:

This petition may be filed using any of these delivery methods.

  • To expunge assignment records:

A petition to expunge assignment records information is considered under the provisions of 37 CFR 1.182. These types of Petitions are rarely granted, unless the petitioner can prove that:

(A) the normal corrective procedures outlined in MPEP § 323.01(a) through § 323.01(c) will not provide the petitioner with adequate relief; and

(B) the integrity of the assignment records will not be affected by granting the petition.

Fees

For fees due, please consult the current USPTO fee schedule on the Fees and payment page for codes 1462/2462/3462 (Large Entity/Small Entity/Micro Entity) under the Patent Petition Fees.

How to file:

This petition may be filed using any of these delivery methods.

For the relevant patent laws and rules applicable to petitions for expungement of papers, please see:

  • 37 CFR 1.59, Expungement of information or copy of papers in an application file;
  • 37 CFR 1.182, Questions not specifically provided for;
  • 37 CFR 1.183, Suspension of rules;
  • MPEP § 724.05, Petition to expunge information or copy of papers in application file;
  • MPEP § 724.06, Handling of petitions to expunge information or copy of papers in application file; and
  • MPEP § 323.01(d), Expungement of assignment records.

Forms:

No form available. Petitioner should submit a signed request that includes information listed in Requirements of a petition.

For further assistance, please contact the Petitions Help Desk between 8:30 AM - 5 PM (EDT).