412.02(d)    Contents of Protective Order

In some cases, parties may agree to modify the Board’s standard protective order, or the standard protective order is modified upon motion approved by the Board. The revised protective order typically may include provisions further clarifying the following:

  • (1) The definition of the type of material to be considered confidential or trade secret information.
  • (2) The description of the manner in which confidential or trade secret information is to be handled.
  • (3) The requirement that a party claiming confidentiality or trade secret protection designate the information covered by the claim prior to disclosure of the information to the discovering party.
  • (4) The provision that a party may not designate information as confidential or trade secret unless the party has a reasonable basis for believing that the information is, in fact, confidential or trade secret in nature.
  • (5) The provision that information designated by the disclosing party as confidential or trade secret may not include information which, at or prior to disclosure thereof to the discovering party, is known to or independently developed by the discovering party; or is public knowledge or becomes available to the public without violation of the agreement.
  • (6) The provision that information designated by the disclosing party as confidential or trade secret may not include information that, after the disclosure thereof, is revealed to the public by a person having the unrestricted right to do so.
  • (7) The provision that information designated by the disclosing party as confidential or trade secret may not include information which is acquired by the discovering party from a third party, which lawfully possesses the information and/or owes no duty of nondisclosure to the party providing discovery.
  • (8) The specification of the persons to whom confidential or trade secret information may be disclosed (e.g., outside counsel; in-house counsel; counsel’s necessary legal and clerical personnel).
  • (9) The provision that all persons to whom confidential or trade secret information is disclosed shall be advised of the existence and terms of the protective order.
  • (10) The provision that the discovering party will not disclose or make use of confidential or trade secret information provided to it under the order except for purposes of the proceeding in which the information is provided.
  • (11) The means for resolving disputes over whether particular matter constitutes confidential or trade secret information.
  • (12) The statement that at the end of the proceeding, each party shall return to the disclosing party all confidential information and materials, including all copies, summaries, and abstracts thereof.
  • (13) For material designated as confidential or trade secret to be made of record in the proceeding, it shall be submitted to the Board electronically designated as "CONFIDENTIAL" via ESTTA, or, where appropriate, by paper in a separate sealed envelope or other sealed container bearing the proceeding number and name, an indication of the general nature of the contents of the container, e.g. opposer’s brief, or applicant’s motion with specification of the subject of the brief or motion, and, in large letters, the designation "CONFIDENTIAL." For Confidential or Confidential – For Attorneys’ Eyes Only (trade secret/commercially sensitive) submissions filed either via ESTTA or, where appropriate, by paper, two versions are required – a confidential version as well as a redacted version available for public viewing. The redacted copy of the submission must be submitted concurrently with the confidential filing, see 37 C.F.R. § 2.126(c). The parties must file Confidential or Confidential – For Attorneys’ Eyes Only (trade secret/commercially sensitive) materials via ESTTA. For confidential submissions, it is preferable for the parties to enclose the confidential information in brackets so as to facilitate a better comparison between the public and confidential versions of the filing when the Board is issuing an order or preparing a final decision. In addition, when referring to material or testimony that has been designated confidential and which cannot be viewed on TTABVUE, the TTABVUE docket and entry number where such material or testimony is located should be included in any citation.

    For further information regarding the filing of confidential materials, see TBMP § 120.02, TBMP § 412.04 and TBMP § 412.05.

The Board’s standard protective order can be found on the USPTO website at: www.uspto.gov.

For additional information concerning the contents of a protective order, see the cases and authorities cited in the note below. [ Note 1.]

NOTES:

 1.   See Johnston Pump/General Valve Inc. v. Chromalloy American Corp., 10 USPQ2d 1671, 1676 (TTAB 1988) (in addition to provisions mandated by Board, protective order may contain other provisions as are agreeable to parties); Neville Chemical Co. v. Lubrizol Corp., 184 USPQ 689, 690 (TTAB 1975) (Board required provision that information furnished by opposer would be confined to applicant’s attorneys). Please Note: These cases were decided prior to automatic imposition of the Board’s standard protective order under 37 C.F.R. § 2.116(g).