Protecting Confidential Information at the PTAB – Part 1

By Ben Snitkoff
One of the many changes under the American Invents Act (AIA) is that documents submitted in proceedings before the Patent Trial and Appeal Board (PTAB) may be filed under seal (that is to say, excluded from public view). Protection for sensitive documents was unavailable for the pre-AIA inter partes reexamination proceedings, however, the AIA authorizes the Patent and Trademark Office (PTO) to keep confidential documents sealed during the new Inter Partes Review and Post-Grant Review proceedings. 35 U.S.C. §§ 316(a)(7), 326(a)(7).

The PTO’s rules on submission of documents under seal seek to “strike a balance between the public’s interest in maintaining a complete and understandable file history and the parties’ interest in protecting truly sensitive information.” Federal Register Vol. 77, No. 157 48756, 48760 (pdf).

While the default is to keep the records of these new proceedings public, regulations promulgated by the Patent Office make it relatively easy to file documents under seal. 37 C.F.R. § 42.14.  If a party wishes to file documents under seal, it must: (1) file a motion to seal; (2) enclose a proposed protective order; and, (3) state good cause for the Board to protect a party from disclosing confidential information. The Board determines what is confidential information in a way consistent with Fed. R. Civ. P. 26(c)(1)(G). Federal Register Vol. 77, No. 157 48756, 48760 (pdf).

The default protective order proposed by the Patent Office puts limitations on who may see information disclosed under the Protective Order. Federal Register Vol. 77, No. 157 48756, Appendix B, 48771 (pdf). Only the following groups of people may have access to confidential documents: (1) Owners of the patent or patents at issue, and named parties; (2) attorneys representing parties in the proceeding; (3) experts retained for the proceeding, who have signed an acknowledgement to be bound by the protective order and that they are not a competitor to any party, or a consultant for a competitor; (4) in-house counsel of a party; and, (5) support personnel of anyone previously listed.

While additional employees of a party may be allowed access to confidential information, they must first sign an acknowledgement to be bound by the protective order, and are subject to being objected-to by the other parties to the proceeding. Similarly, a party may oppose a motion to seal on the grounds that the proposed protective order allows too many people access to the confidential information. The opposing party may propose alternative limitations on access to the information. Federal Register Vol. 77, No. 157 48756, Appendix B, 48771 (pdf).

Stay tuned for Part 2 on alternatives to the PTO’s default protective order.

By Ben Snitkoff

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