Chapter 100 Secrecy, Access, National Security , … · Chapter 100 Secrecy, Access, National...

Chapter 100 Secrecy, Access, National Security, and ForeignFiling

General101 Information as to Status of anApplication

102

Right of Public To Inspect Patent Filesand Some Application Files

103

Power to Inspect Application104 Suspended or Excluded PractitionerCannot Inspect

105

Control of Inspection by Assignee106 Rights of Assignee of Part Interest106.01

[Reserved]107-109 Confidential Nature of InternationalApplications

110

[Reserved]111-114 Review of Applications for NationalSecurity and Property Rights Issues

115

[Reserved]116-119 Secrecy Orders120 Handling of Applications under SecrecyOrder and/or Bearing National SecurityMarkings

121

[Reserved]122-129 Examination of Secrecy Order Cases130 [Reserved]131-139 Foreign Filing Licenses140 [Reserved]141-149 Statements to DOE and NASA150 Content of the Statements151

101 General [R-07.2015]

35 U.S.C. 122 Confidential status of applications;publication of patent applications.

(a) CONFIDENTIALITY.— Except as provided insubsection (b), applications for patents shall be kept inconfidence by the Patent and Trademark Office and noinformation concerning the same given without authority of theapplicant or owner unless necessary to carry out the provisionsof an Act of Congress or in such special circumstances as maybe determined by the Director.

(b) PUBLICATION.—

(1) IN GENERAL.—

(A) Subject to paragraph (2), each application fora patent shall be published, in accordance with proceduresdetermined by the Director, promptly after the expiration of aperiod of 18 months from the earliest filing date for which abenefit is sought under this title. At the request of the applicant,an application may be published earlier than the end of such18-month period.

(B) No information concerning published patentapplications shall be made available to the public except as theDirector determines.

(C) Notwithstanding any other provision of law,a determination by the Director to release or not to releaseinformation concerning a published patent application shall befinal and nonreviewable.

(2) EXCEPTIONS.—

(A) An application shall not be published if thatapplication is—

(i) no longer pending;

(ii) subject to a secrecy order under section181 ;

(iii) a provisional application filed undersection 111(b); or

(iv) an application for a design patent filedunder chapter 16.

(B)(i) If an applicant makes a request uponfiling, certifying that the invention disclosed in the applicationhas not and will not be the subject of an application filed inanother country, or under a multilateral international agreement,that requires publication of applications 18 months after filing,the application shall not be published as provided in paragraph(1).

(ii) An applicant may rescind a request madeunder clause (i) at any time.

(iii) An applicant who has made a requestunder clause (i) but who subsequently files, in a foreign countryor under a multilateral international agreement specified inclause (i), an application directed to the invention disclosed inthe application filed in the Patent and Trademark Office, shallnotify the Director of such filing not later than 45 days after thedate of the filing of such foreign or international application. Afailure of the applicant to provide such notice within theprescribed period shall result in the application being regardedas abandoned.

(iv) If an applicant rescinds a request madeunder clause (i) or notifies the Director that an application wasfiled in a foreign country or under a multilateral internationalagreement specified in clause (i), the application shall bepublished in accordance with the provisions of paragraph (1)on or as soon as is practical after the date that is specified inclause (i).

(v) If an applicant has filed applications in oneor more foreign countries, directly or through a multilateralinternational agreement, and such foreign filed applicationscorresponding to an application filed in the Patent andTrademark Office or the description of the invention in suchforeign filed applications is less extensive than the applicationor description of the invention in the application filed in thePatent and Trademark Office, the applicant may submit aredacted copy of the application filed in the Patent andTrademark Office eliminating any part or description of theinvention in such application that is not also contained in any

Rev. 07.2015, October 2015100-1

of the corresponding applications filed in a foreign country. TheDirector may only publish the redacted copy of the applicationunless the redacted copy of the application is not received within16 months after the earliest effective filing date for which abenefit is sought under this title. The provisions of section 154(d)shall not apply to a claim if the description of the inventionpublished in the redacted application filed under this clause withrespect to the claim does not enable a person skilled in the artto make and use the subject matter of the claim.

(c) PROTEST AND PRE-ISSUANCE OPPOSITION.—The Director shall establish appropriate procedures to ensurethat no protest or other form of pre-issuance opposition to thegrant of a patent on an application may be initiated afterpublication of the application without the express written consentof the applicant.

(d) NATIONAL SECURITY.— No application for patentshall be published under subsection (b)(1) if the publication ordisclosure of such invention would be detrimental to the nationalsecurity. The Director shall establish appropriate procedures toensure that such applications are promptly identified and thesecrecy of such inventions is maintained in accordance withchapter 17 .

(e) PREISSUANCE SUBMISSIONS BY THIRDPARTIES.—

(1) IN GENERAL.—Any third party may submit forconsideration and inclusion in the record of a patent application,any patent, published patent application, or other printedpublication of potential relevance to the examination of theapplication, if such submission is made in writing before theearlier of—

(A) the date a notice of allowance under section151 is given or mailed in the application for patent; or

(B) the later of—

(i) 6 months after the date on which theapplication for patent is first published under section 122 by theOffice, or

(ii) the date of the first rejection under section132 of any claim by the examiner during the examination of theapplication for patent.

(2) OTHER REQUIREMENTS.—Any submissionunder paragraph (1) shall—

(A) set forth a concise description of the assertedrelevance of each submitted document;

(B) be accompanied by such fee as the Directormay prescribe; and

(C) include a statement by the person making suchsubmission affirming that the submission was made incompliance with this section.

18 U.S.C. 2071 Concealment, removal, or mutilationgenerally.

(a) Whoever willfully and unlawfully conceals, removes,mutilates, obliterates, or destroys, or attempts to do so, or, withintent to do so takes and carries away any record, proceeding,map, book, paper, document, or other thing, filed or deposited

with any clerk or officer of any court of the United States, or inany public office, or with any judicial or public officer of theUnited States, shall be fined under this title or imprisoned notmore than three years, or both.

(b) Whoever, having the custody of any such record,proceeding, map, book, document, paper, or other thing, willfullyand unlawfully conceals, removes, mutilates, obliterates,falsifies, or destroys the same, shall be fined under this title orimprisoned not more than three years, or both; and shall forfeithis office and be disqualified from holding any office under theUnited States. As used in this subsection, the term “office” doesnot include the office held by any person as a retired officer ofthe Armed Forces of the United States.

37 CFR 1.11 Files open to the public.

(a) The specification, drawings, and all papers relating tothe file of: A published application; a patent; or a statutoryinvention registration are open to inspection by the public, andcopies may be obtained upon the payment of the fee set forthin § 1.19(b)(2). If an application was published in redacted formpursuant to § 1.217, the complete file wrapper and contents ofthe patent application will not be available if: The requirementsof paragraphs (d)(1), (d)(2), and (d)(3) of § 1.217 have beenmet in the application; and the application is still pending. See§ 2.27 of this title for trademark files.

*****

37 CFR 1.14 Patent applications preserved in confidence.

(a) Confidentiality of patent application information. Patentapplications that have not been published under 35 U.S.C. 122(b)are generally preserved in confidence pursuant to 35 U.S.C.122(a). Information concerning the filing, pendency, or subjectmatter of an application for patent, including status information,and access to the application, will only be given to the publicas set forth in § 1.11 or in this section.

(1) Records associated with patent applications (seeparagraph (g) of this section for international applications andparagraph (j) of this section for international design applications)may be available in the following situations:

(i) Patented applications and statutory inventionregistrations. The file of an application that has issued as apatent or published as a statutory invention registration isavailable to the public as set forth in § 1.11. A copy of the patentapplication-as-filed, the file contents of the application, or aspecific document in the file of such an application may beprovided upon request and payment of the appropriate fee setforth in § 1.19(b).

(ii) Published abandoned applications. The fileof an abandoned published application is available to the publicas set forth in § 1.11(a). A copy of the application-as-filed, thefile contents of the published application, or a specific documentin the file of the published application may be provided to anyperson upon request and payment of the appropriate fee set forthin § 1.19(b).

(iii) Published pending applications. A copy ofthe application-as-filed, the file contents of the application, ora specific document in the file of a pending published applicationmay be provided to any person upon request and payment of

100-2Rev. 07.2015, October 2015

MANUAL OF PATENT EXAMINING PROCEDURE§ 101

the appropriate fee set forth in § 1.19(b). If a redacted copy ofthe application was used for the patent application publication,the copy of the specification, drawings, and papers may belimited to a redacted copy. The Office will not provide accessto the paper file of a pending application that has been published,except as provided in paragraph (c) or (i) of this section.

(iv) Unpublished abandoned applications(including provisional applications) that are identified or reliedupon. The file contents of an unpublished, abandonedapplication may be made available to the public if the applicationis identified in a U.S. patent, a statutory invention registration,a U.S. patent application publication, an international publicationof an international application under PCT Article 21(2), or apublication of an international registration under HagueAgreement Article 10(3) of an international design applicationdesignating the United States. An application is considered tohave been identified in a document, such as a patent, when theapplication number or serial number and filing date, first namedinventor, title, and filing date or other application specificinformation are provided in the text of the patent, but not whenthe same identification is made in a paper in the file contents ofthe patent and is not included in the printed patent. Also, thefile contents may be made available to the public, upon a writtenrequest, if benefit of the abandoned application is claimed under35 U.S.C. 119(e), 120, 121, 365(c), or 386(c) in an applicationthat has issued as a U.S. patent, or has published as a statutoryinvention registration, a U.S. patent application publication, aninternational publication of an international application underPCT Article 21(2), or a publication of an internationalregistration under Hague Agreement Article 10(3). A copy ofthe application-as-filed, the file contents of the application, ora specific document in the file of the application may beprovided to any person upon written request, and payment ofthe appropriate fee (§ 1.19(b)).

(v) Unpublished pending applications (includingprovisional applications) whose benefit is claimed. A copy ofthe file contents of an unpublished pending application may beprovided to any person, upon written request and payment ofthe appropriate fee (§ 1.19(b)), if the benefit of the applicationis claimed under 35 U.S.C. 119(e), 120, 121, 365(c), or 386(c)in an application that has issued as a U.S. patent, or in anapplication that has published as a statutory inventionregistration, a U.S. patent application publication, aninternational publication of an international application underPCT Article 21(2), or a publication of an internationalregistration under Hague Agreement Article 10(3). A copy ofthe application-as-filed, or a specific document in the file of thepending application may also be provided to any person uponwritten request and payment of the appropriate fee (§ 1.19(b)).The Office will not provide access to the paper file of a pendingapplication, except as provided in paragraph (c) or (i) of thissection.

(vi) Unpublished pending applications (includingprovisional applications) that are incorporated by reference orotherwise identified . A copy of the application as originallyfiled of an unpublished pending application may be providedto any person, upon written request and payment of theappropriate fee (§ 1.19(b)), if the application is incorporated byreference or otherwise identified in a U.S. patent, a statutoryinvention registration, a U.S. patent application publication, an

international publication of an international application underPCT Article 21(2), or a publication of an internationalregistration under Hague Agreement Article 10(3) of aninternational design application designating the United States.The Office will not provide access to the paper file of a pendingapplication, except as provided in paragraph (c) or (i) of thissection.

(vii) When a petition for access or a power toinspect is required. Applications that were not published orpatented, that are not the subject of a benefit claim under 35U.S.C. 119(e), 120, 121, 365(c), or 386(c) in an application thathas issued as a U.S. patent, an application that has published asa statutory invention registration, a U.S. patent applicationpublication, an international publication of an internationalapplication under PCT Article 21(2), or a publication of aninternational registration under Hague Agreement Article 10(3),or are not identified in a U.S. patent, a statutory inventionregistration, a U.S. patent application publication, aninternational publication of an international application underPCT Article 21(2), or a publication of an internationalregistration under Hague Agreement Article 10(3) of aninternational design application designating the United States,are not available to the public. If an application is identified inthe file contents of another application, but not the publishedpatent application or patent itself, a granted petition for access(see paragraph (i)) or a power to inspect (see paragraph (c) ofthis section) is necessary to obtain the application, or a copy ofthe application.

(2) Information concerning a patent application maybe communicated to the public if the patent application isidentified in a published patent document or in an applicationas set forth in paragraphs (a)(1)(i) through (a)(1)(vi) of thissection. The information that may be communicated to the public(i.e., status information) includes:

(i) Whether the application is pending, abandoned,or patented;

(ii) Whether the application has been publishedunder 35 U.S.C. 122(b);

(iii) The application “numerical identifier” whichmay be:

(A) The eight-digit application number (thetwo-digit series code plus the six-digit serial number); or

(B) The six-digit serial number plus any oneof the filing date of the national application, the internationalfiling date, or date of entry into the national stage; and

(iv) Whether another application claims the benefitof the application (i.e., whether there are any applications thatclaim the benefit of the filing date under 35 U.S.C. 119(e), 120,121, 365, or 386 of the application), and if there are any suchapplications, the numerical identifier of the application, thespecified relationship between the applications (e.g.,continuation), whether the application is pending, abandonedor patented, and whether the application has been publishedunder 35 U.S.C. 122(b).

*****

Rev. 07.2015, October 2015100-3

§ 101SECRECY, ACCESS, NATIONAL SECURITY, AND FOREIGN FILING

All U.S. Patent and Trademark Office employeesare legally obligated to preserve pending applicationsfor patents in confidence until they are published orpatented in accordance with 35 U.S.C. 122 and 37CFR 1.14. 35 U.S.C. 122 and 18 U.S.C. 2071 imposestatutory requirements which cover the handling ofpatent applications and related documents.Suspension, removal, and even criminal penaltiesmay be imposed for violations of these statutes.

Any employee having custody of a patent applicationor related documents will be responsible formaintaining confidentiality and otherwiseconforming with the requirements of law. No partof any application or paper related thereto should bereproduced or copied except for official purposes.Application files must not be displayed or handledso as to permit perusal or inspection by anyunauthorized member of the public.

Whenever an application, or an artifact file in anImage File Wrapper (IFW) application, is removedfrom the operating area having custody of the file,a charge on the PALM system must be properly andpromptly made. Applications, artifact files, andofficial papers for which there is no electronic filemust not be placed in desk drawers or other locationswhere they might be easily overlooked or are notvisible to authorized personnel. Interoffice mail mustbe sent in appropriate envelopes.

Official papers are accepted only at the CustomerService Window, except for certain papers that havebeen specifically exempted from the central deliverypolicy. See MPEP § 502. Appropriate correctiveaction for IFW messages with faulty identificationsor incorrect routing should be taken at once to ensurethe prompt receipt thereof at the appropriatedestination.

All U.S. Patent and Trademark Office employeesshould bear in mind at all times the criticalimportance of ensuring the confidentiality andaccessibility of patent application files and relateddocuments, and in addition to the specific proceduresreferred to above, should take all appropriate actionto that end.

Examiners, classifiers, and other U.S. Patent andTrademark Office employees who assist publicsearchers by outlining or indicating a field of search,should also bear in mind the critical importance ofensuring the confidentiality of information revealedby a searcher when requesting field of searchassistance. See MPEP § 1701. Statutory requirementsand curbs regarding the use of information obtainedby an employee through government employmentare imposed by 5 U.S.C. 2635.701- 2635.703 and18 U.S.C. 1905.

Examiners, while holding interviews with attorneysand applicants, should be careful to preventexposures of files and drawings of other applicants.

Extreme care should be taken to prevent inadvertentand/or inappropriate disclosure of the filing date orapplication number of any application. This appliesnot only to Office actions but also to notes in the fileor in the artifact folder of IFW applications.

TELEPHONE AND IN-PERSON REQUESTS FORINFORMATION CONCERNING PENDING ORABANDONED APPLICATIONS



*****







100-4Rev. 07.2015, October 2015



*****

Except as provided in 35 U.S.C. 122(b), noinformation concerning pending or abandoned patentapplications (except applications which have beenpublished, reissue applications and reexaminationproceedings) may be given to the public withoutappropriate written authorization. See 35 U.S.C. 122and 37 CFR 1.14.

When handling an incoming telephone call or anin-person request for information regarding anunpublished pending or abandoned patentapplication, no information should be disclosed untilthe identity of the requester can be adequatelyverified as set forth below. Particular care must beexercised when a request is made for the publicationdate or publication number, or issue date and patentnumber assigned to a pending patent application. Ifthe publication or issue date is later than the currentdate (i.e., the date of the request), such informationmay be given only to the applicant, an inventor, theassignee of record, or the attorney or agent of record.

The following procedure should be followed beforeany information about an unpublished pending orabandoned patent application is given over thetelephone:

(A) Obtain the caller’s full name, the applicationnumber, and the caller’s telephone number. Ask thecaller if there is a patent practitioner (attorney oragent) of record.

(1) If there is a patent practitioner of record,ask for his or her registration number. If theregistration number is not known, ask for the nameof the patent practitioner of record. Inform the callerthat a patent practitioner of record will be called afterverification of his/her identity and that informationconcerning the application will be released to thatpatent practitioner.

(2) If there is no patent practitioner of record,ask the caller why he or she is entitled to informationconcerning the application. If the caller identifieshimself or herself as inventor, an applicant or anauthorized representative of the assignee of record,ask for the correspondence address of record andinform caller that his or her association with theapplication must be verified before any informationconcerning the application can be released and thathe or she will be called back. If the caller indicatesthat he or she is not an inventor, applicant or anauthorized representative of the assignee of recordthen status information may only be given pursuantto MPEP § 102.

(B) Verify that information concerning theapplication can be released by checking PALM orthe application file.

(1) If the caller stated there was a patentpractitioner of record, PALM intranet should be usedto verify the registration number given or to obtainthe registration number of a patent practitioner ofrecord. Then PALM intranet (using the registrationnumber) should be used to obtain a telephonenumber for a patent practitioner of record.

(2) If the caller identified himself or herselfas an inventor, applicant or an authorizedrepresentative of the assignee of record, PALMintranet should be used to verify the correspondenceaddress of record. PALM intranet should be used todetermine if there is a patent practitioner of record.If there is a patent practitioner of record, theirtelephone number can be obtained from PALMintranet.

(C) Return the call using the telephone numberas specified below.

(1) If a patent practitioner is of record in theapplication, information concerning the applicationshould only be released by calling the patentpractitioner's telephone number obtained fromPALM intranet.

(2) If the inventor, applicant or an authorizedrepresentative of the assignee of record requestsinformation, and there is no patent practitioner ofrecord and the correspondence address of record hasbeen verified, information concerning the applicationcan be released to the caller using the telephonenumber given by the caller. If the caller’s associationwith the application cannot be verified, no

Rev. 07.2015, October 2015100-5


information concerning the application will bereleased. However, the caller should be informedthat the caller’s association with the applicationcould not be verified.

In handling an in-person request, ask the requesterto wait while verifying their identification as in (B)above.

102 Information as to Status of anApplication [R-07.2015]




(i) Patented applications and statutory inventionregistrations. The file of an application that has issued as apatent or published as a statutory invention registration isavailable to the public as set forth in §1.11(a). A copy of thepatent application-as-filed, the file contents of the application,or a specific document in the file of such an application may beprovided upon request and payment of the appropriate fee setforth in § 1.19(b).

(ii) Published abandoned applications. The fileof an abandoned published application is available to the publicas set forth in §1.11(a) . A copy of the application-as-filed, thefile contents of the published application, or a specific documentin the file of the published application may be provided to anyperson upon request and payment of the appropriate fee set forthin § 1.19(b) .

(iii) Published pending applications. A copy ofthe application-as-filed, the file contents of the application, ora specific document in the file of a pending published applicationmay be provided to any person upon request and payment ofthe appropriate fee set forth in § 1.19(b) . If a redacted copy ofthe application was used for the patent application publication,the copy of the specification, drawings, and papers may belimited to a redacted copy. The Office will not provide accessto the paper file of a pending application that has been published,except as provided in paragraph (c) or (i) of this section.

(iv) Unpublished abandoned applications(including provisional applications) that are identified or reliedupon. The file contents of an unpublished, abandonedapplication may be made available to the public if the applicationis identified in a U.S. patent, a statutory invention registration,a U.S. patent application publication, an international publicationof an international application under PCT Article 21(2) , or apublication of an international registration under Hague

Agreement Article 10(3) of an international design applicationdesignating the United States. An application is considered tohave been identified in a document, such as a patent, when theapplication number or serial number and filing date, first namedinventor, title, and filing date or other application specificinformation are provided in the text of the patent, but not whenthe same identification is made in a paper in the file contents ofthe patent and is not included in the printed patent. Also, thefile contents may be made available to the public, upon a writtenrequest, if benefit of the abandoned application is claimed under35 U.S.C. 119(e) ,120 , 121 , 365(c), or 386(c) in an applicationthat has issued as a U.S. patent, or has published as a statutoryinvention registration, a U.S. patent application publication, aninternational publication of an international application underPCT Article 21(2), or a publication of an internationalregistration under Hague Agreement Article 10(3). A copy ofthe application-as-filed, the file contents of the application, ora specific document in the file of the application may beprovided to any person upon written request and payment of theappropriate fee (§ 1.19(b) ).

(v) Unpublished pending applications (includingprovisional applications) whose benefit is claimed. A copy ofthe file contents of an unpublished pending application may beprovided to any person, upon written request and payment ofthe appropriate fee (§ 1.19(b)), if the benefit of the applicationis claimed under 35 U.S.C. 119(e), 120, 121, 365(c), or 386(c)in an application that has issued as a U.S. patent, or in anapplication that has published as a statutory inventionregistration, a U.S. patent application publication, aninternational publication of an international application underPCT Article 21(2), or a publication of an internationalregistration under Hague Agreement Article 10(3). A copy ofthe application-as-filed or a specific document in the file of thepending application may also be provided to any person uponwritten request and payment of the appropriate fee (§ 1.19(b)).The Office will not provide access to the paper file of a pendingapplication, except as provided in paragraph (c) or (i) of thissection.

(vi) Unpublished pending applications (includingprovisional applications) that are incorporated by reference orotherwise identified. A copy of the application as originallyfiled of an unpublished pending application may be providedto any person, upon written request and payment of theappropriate fee (§ 1.19(b)), if the application is incorporated byreference or otherwise identified in a U.S. patent, a statutoryinvention registration, a U.S. patent application publication, aninternational publication of an international application underPCT Article 21(2), or a publication of an internationalregistration under Hague Agreement Article 10(3) of aninternational design application designating the United States.The Office will not provide access to the paper file of a pendingapplication, except as provided in paragraph (c) or (i) of thissection.

(vii) When a petition for access or a power toinspect is required. Applications that were not published orpatented, that are not the subject of a benefit claim under 35U.S.C. 119(e), 120, 121, 365(c), or 386(c) in an application thathas issued as a U.S. patent, an application that has published asa statutory invention registration, a U.S. patent applicationpublication, an international publication of an international

100-6Rev. 07.2015, October 2015


application under PCT Article 21(2) , or a publication of aninternational registration under Hague Agreement Article 10(3),or are not identified in a U.S. patent, a statutory inventionregistration, a U.S. patent application publication, aninternational publication of an international application underPCT Article 21(2) , or a publication of an internationalregistration under Hague Agreement Article 10(3) of aninternational design application designating the United States,are not available to the public. If an application is identified inthe file contents of another application, but not the publishedpatent application or patent itself, a granted petition for access(see paragraph (i)) or a power to inspect (see paragraph (c) ofthis section) is necessary to obtain the application, or a copy ofthe application.








*****

Status information of an application means only thefollowing information:

(A) whether the application is pending,abandoned, or patented;

(B) whether the application has been published;

(C) the application number or the serial numberplus any one of the filing date of the nationalapplication, the international filing date or the dateof entry into the national stage; and

(D) whether another application claims thebenefit of the application (i.e., whether there are anyapplications that claim the benefit of the filing dateunder 35 U.S.C. 119(e), 120, 121, 365, or 386 of theapplication), and if there are any such applications,status information therefor as set forth in 37 CFR1.14(a)(2)(iv).

A requester seeking status information regardingan application should check the Patent ApplicationInformation Retrieval (PAIR) system on the USPTOwebsite at www.uspto.gov/learning-and-resources/support-centers/patent-electronic-business-center.Alternatively, the requester may contact the FileInformation Unit (see MPEP § 1730). The FileInformation Unit (FIU) will check the relevant Officerecords and will inform the requester whether theapplication has been published or has issued as apatent. If the application has been published, the FIUwill inform the requester of the publication numberand publication date, and if the application has issuedas a patent, the patent number, issue date andclassification. If the application has not beenpublished, but is pending or abandoned then the FIUshould determine whether the requester is:

(1) the applicant;

(2) a patent practitioner of record;

(3) the assignee or an assignee of an undividedpart interest;

(4) the inventor or a joint inventor; or

(5) a registered attorney or agent named in thepapers accompanying the application papers filedunder 37 CFR 1.53 or the national stage documentsfiled under 37 CFR 1.495, if a power of attorney hasnot been appointed under 37 CFR 1.32.

If the requester is any of (1) - (5) as set forth above,or if the application contains written authoritygranting access to the requester signed by any of (1)- (5) as set forth above, then the requester is entitledto status information. See 37 CFR 1.14(c) and MPEP§ 104 for additional information pertaining to whocan provide written authority granting access to suchinformation. If the requester is inquiring aboutwhether a reply was received or when an Officeaction can be expected, the requester should bedirected to call the Technology Center (TC) to whichthe application is assigned. The assignment of an

Rev. 07.2015, October 2015100-7


http://www.uspto.gov/learning-and-resources/support-centers/patent-electronic-business-center

http://www.uspto.gov/learning-and-resources/support-centers/patent-electronic-business-center

application to a TC can be determined from PALMintranet.

If the requester is not any of (1) - (5) or a personwith written authority from any of (1) - (5) as setforth above, and the application is (1) identified byapplication number (or serial number and filing date)in a published patent document, or (2) an applicationclaiming the benefit of the filing date of anapplication identified by application number (orserial number and filing date) in a published patentdocument, then a written request including a copyof a published patent document (United States orforeign) which refers to the specific application mustbe provided when requesting status information forthe application. If the published patent document isnot in English, then a translation of the pertinent partthereof must also be included. The published patentdocument may be presented in person to the FIU orin written correspondence to the U.S. Patent andTrademark Office, for example, by facsimiletransmission. Any written correspondence mustinclude a return address or facsimile number. If theapplication is referred to by application number orserial number and filing date in a published patentdocument (e.g., a U.S. patent, a statutory inventionregistration, a U.S. patent application publication,an international application publication or aninternational design application), or in a U.S.application open to public inspection, pursuant to37 CFR 1.14(a), the requester is entitled to statusinformation for the application. (The publishedpatent document will at least identify the applicationfrom which the patent itself was issued.) PALMintranet should be used to determine the status ofthe application. If the requester asks whether thereare any applications on file which claim the benefitof the filing date of the identified application,pursuant to 37 CFR 1.14(a)(2)(iv), status information(application number, filing date and whether theapplication is pending, abandoned or patented) forthe applications claiming benefit of the identifiedapplication may be given to the requester as well.PALM intranet should be used to determine theapplication number and filing date of anyapplications claiming the benefit of the filing dateof the identified application. The requester shouldbe informed of the national applications listed in the“child” section of the screen. If the child applicationis not shown to have been patented , PALM intranet

should be used to determine whether the applicationis pending or abandoned. Alternatively, PALMintranet may be used with the patent number forcontinuity data for the patent. Other informationcontained on the screen, such as whether theapplication is a Continuation-in-Part (CIP),continuation or divisional application, the date ofabandonment of the application, and the issue date,may be confidential information and should not becommunicated. As to the extent of the chain ofapplications for which status information is available,the rule applies only to subsequent and not priorapplications.

Furthermore, if the requester is not any of (1) - (5)or a person with written authority from any of (1) -(5) as set forth above, but the application is a nationalstage application or any application claiming thebenefit of the filing date of a published internationalapplication and the United States of America hasbeen indicated as a Designated State in theinternational application, pursuant to 37 CFR1.14(a)(2)(iv), the requester is entitled to statusinformation for the national stage application as wellas any application claiming the benefit of the filingdate of the published international application. Acopy of the first page of the published internationalapplication or of the corresponding page of the PCTGazette must be supplied with the status request.The status request should be made in writing to theInternational Patent Legal Administration (see MPEP§ 1730). Alternatively, inquiries relating toapplications claiming the benefit of the filing dateof a published international application may bedirected to the PCT Help desk. Only the serialnumber and filing date, or application number, aswell as whether the application is pending,abandoned, or patented may be given for the nationalstage application and for any applications claimingthe benefit of the filing date of the referencedpublished international application. Otherinformation contained on the continuity data screen,such as whether the application is a CIP, continuationor divisional application, the date of abandonmentof the application and issue date may be confidentialinformation and should not be communicated.

If the requester is not any of (1) - (5) or a personwith written authority from any of (1) - (5) as setforth above, but the application is an international

100-8Rev. 07.2015, October 2015


design application maintained by the Office in itscapacity as a designated office (37 CFR 1.1003) fornational processing, pursuant to 37 CFR1.14(a)(2)(iv), the requester is entitled to statusinformation for the international design applicationas well as any application claiming the benefit ofthe filing date of the published international designapplication. With respect to an international designapplication maintained by the Office in its capacityas an office of indirect filing (37 CFR 1.1002), statusinformation may be made available where containedin the file of the international design applicationmaintained by the Office for national processing.

STATUS LOCATION INFORMATION FOROFFICE PERSONNEL

When it is desired to determine the current locationor status of an application, Office personnel shoulduse PALM. If the application is an Image FileWrapper (IFW) application, no location is associatedwith the file.

Office personnel requesting status/locationinformation on applications prior to 07 seriesapplications that are not in the PALM system shouldcontact the FIU (see MPEP § 1730) where thenumerical index records of the above mentionedapplications are maintained.

103 Right of Public To Inspect Patent Filesand Some Application Files [R-07.2015]

37 CFR 1.11 Files open to the public.

(a) The specification, drawings, and all papers relating tothe file of: A published application; a patent; or a statutoryinvention registration are open to inspection by the public, andcopies may be obtained upon the payment of the fee set forthin § 1.19(b)(2). If an application was published in redacted formpursuant to § 1.217, the complete file wrapper and contents ofthe patent application will not be available if: The requirementsof paragraphs (d)(1), (d)(2), and (d)(3) of § 1.217 have beenmet in the application; and the application is still pending. See§ 2.27 of this title for trademark files.

(b) All reissue applications, all applications in which theOffice has accepted a request to open the complete applicationto inspection by the public, and related papers in the applicationfile, are open to inspection by the public, and copies may befurnished upon paying the fee therefor. The filing of reissueapplications, other than continued prosecution applications under§1.53(d) of reissue applications, will be announced in the Official Gazette. The announcement shall include at least thefiling date, reissue application and original patent numbers, title,class and subclass, name of the inventor, name of the owner of

record, name of the attorney or agent of record, and examininggroup to which the reissue application is assigned.

(c) All requests for reexamination for which all therequirements of § 1.510 or § 1.915 have been satisfied will beannounced in the Official Gazette. Any reexaminations at theinitiative of the Director pursuant to § 1.520 will also beannounced in the Official Gazette. The announcement shallinclude at least the date of the request, if any, the reexaminationrequest control number or the Director initiated order controlnumber, patent number, title, class and subclass, name of theinventor, name of the patent owner of record, and the examininggroup to which the reexamination is assigned.

(d) All papers or copies thereof relating to a reexaminationproceeding which have been entered of record in the patent orreexamination file are open to inspection by the general public,and copies may be furnished upon paying the fee therefor.

(e) Except as prohibited in § 41.6(b), § 42.14 or §42.410(b), the file of any interference or trial before the PatentTrial and Appeal Board is open to public inspection and copiesof the file may be obtained upon payment of the fee therefor.




(i) Patented applications and statutory inventionregistrations. The file of an application that has issued as apatent or published as a statutory invention registration isavailable to the public as set forth in §1.11(a). A copy of thepatent application-as-filed, the file contents of the application,or a specific document in the file of such an application may beprovided upon request and payment of the appropriate fee setforth in § 1.19(b).


(iii) Published pending applications. A copy ofthe application-as-filed, the file contents of the application, ora specific document in the file of a pending published applicationmay be provided to any person upon request and payment ofthe appropriate fee set forth in § 1.19(b). If a redacted copy ofthe application was used for the patent application publication,the copy of the specification, drawings, and papers may belimited to a redacted copy. The Office will not provide accessto the paper file of a pending application that has been published,except as provided in paragraph (c) or (i) of this section.

Rev. 07.2015, October 2015100-9


(iv) Unpublished abandoned applications(including provisional applications) that are identified or reliedupon. The file contents of an unpublished, abandonedapplication may be made available to the public if the applicationis identified in a U.S. patent, a statutory invention registration,a U.S. patent application publication, an international publicationof an international application under PCT Article 21(2), or apublication of an international registration under HagueAgreement Article 10(3) of an international design applicationdesignating the United States. An application is considered tohave been identified in a document, such as a patent, when theapplication number or serial number and filing date, first namedinventor, title, and filing date or other application specificinformation are provided in the text of the patent, but not whenthe same identification is made in a paper in the file contents ofthe patent and is not included in the printed patent. Also, thefile contents may be made available to the public, upon a writtenrequest, if benefit of the abandoned application is claimed under35 U.S.C. 119(e), 120, 121, 365, or 386(c) in an applicationthat has issued as a U.S. patent, or has published as a statutoryinvention registration, a U.S. patent application publication, aninternational publication of an international applicationunderPCT Article 21(2), or a publication of an internationalregistration under Hague Agreement Article 10(3). A copy ofthe application-as-filed, the file contents of the application, ora specific document in the file of the application may beprovided to any person upon written request and payment of theappropriate fee (§ 1.19(b)).

(v) Unpublished pending applications (includingprovisional applications) whose benefit is claimed. A copy ofthe file contents of an unpublished pending application may beprovided to any person, upon written request and payment ofthe appropriate fee (§ 1.19(b)), if the benefit of the applicationis claimed under 35 U.S.C. 119(e), 120, 121, 365(c), or 386(c)in an application that has issued as a U.S. patent, or in anapplication that has published as a statutory inventionregistration, a U.S. patent application publication, aninternational publication of an international applicationunderPCT Article 21(2), or a publication of an internationalregistration under Hague Agreement Article 10(3). A copy ofthe application-as-filed or a specific document in the file of thepending application may also be provided to any person uponwritten request and payment of the appropriate fee (§ 1.19(b)).The Office will not provide access to the paper file of a pendingapplication, except as provided in paragraph (c) or (i) of thissection.

(vi) Unpublished pending applications (includingprovisional applications) that are incorporated by reference orotherwise identified. A copy of the application as originallyfiled of an unpublished pending application may be providedto any person, upon written request and payment of theappropriate fee (§ 1.19(b)), if the application is incorporated byreference or otherwise identified in a U.S. patent, a statutoryinvention registration, a U.S. patent application publication, aninternational publication of an international application underPCT Article 21(2), or a publication of an internationalregistration under Hague Agreement Article 10(3) of aninternational design application designating the United States.The Office will not provide access to the paper file of a pendingapplication, except as provided in paragraph (c) or (i) of thissection.

(vii) When a petition for access or a power toinspect is required. Applications that were not published orpatented, that are not the subject of a benefit claim under 35U.S.C. 119(e), 120, 121, 365, or 386(c) in an application thathas issued as a U.S. patent, an application that has published asa statutory invention registration, a U.S. patent applicationpublication, an international publication of an internationalapplication under PCT Article 21(2) , or a publication of aninternational registration under Hague Agreement Article 10(3),or are not identified in a U.S. patent, a statutory inventionregistration, a U.S. patent application publication, aninternational publication of an international application underPCT Article 21(2), or a publication of an internationalregistration under Hague Agreement Article 10(3) of aninternational design application designating the United States,are not available to the public. If an application is identified inthe file contents of another application, but not the publishedpatent application or patent itself, a granted petition for access(see paragraph (i)) or a power to inspect (see paragraph (c) ofthis section) is necessary to obtain the application, or a copy ofthe application.

(2) Information concerning a patent application maybe communicated to the public if the patent application isidentified in a published patent document or in an applicationas set forth in paragraphs (a)(1)(i) through (a)(1)(vi) of thissection. The information that may be communicated to the public( i.e., status information) includes:







*****

I. ACCESS TO IMAGE FILE WRAPPER (IFW)APPLICATIONS

The Image File Wrapper (IFW) system uses imagetechnology to replace the paper processing of patentapplications in the Office. Paper components of these

100-10Rev. 07.2015, October 2015


application files (including the specification, oathor declaration, drawings, information disclosurestatements, amendments, Office actions, and filejacket notations) have been scanned to createelectronic image files. For patent applications in theIFW system, the IFW file is the Official file and noaccess is granted to the original paper documentsheets used to create the IFW file. All processingand examination is conducted using the electronicimages instead of the paper source documents.

If an IFW file has been created for a patentedapplication, published application, or an applicationto which a patented or published application claimsdomestic priority, the IFW file (with the exceptionof non-patent literature) is accessible through publicPAIR. All patent applications filed after June 30,2003, have been scanned into the IFW system areavailable in public PAIR upon publishing orpatenting. Pending applications filed before June 30,2003, are scanned into IFW as incoming papers arereceived in the Office.

II. PUBLISHED APPLICATIONS




*****


(iii) Published pending applications. A copy ofthe application-as-filed, the file contents of the application, ora specific document in the file of a pending published applicationmay be provided to any person upon request and payment ofthe appropriate fee set forth in § 1.19(b). If a redacted copy ofthe application was used for the patent application publication,the copy of the specification, drawings, and papers may belimited to a redacted copy. The Office will not provide accessto the paper file of a pending application that has been published,except as provided in paragraph (c) or (i) of this section.

*****

If a patent application has been published pursuantto 35 U.S.C. 122(b), then a copy of the specification,drawings, and all papers relating to the file of thatpublished application (whether abandoned orpending) may be provided to any person uponwritten request and payment of the fee set forth in37 CFR 1.19(b). See 37 CFR 1.14(a)(1)(ii) and (iii).Pursuant to 35 U.S.C. 374 and 35 U.S.C. 390, thepublication by the International Bureau of aninternational application under the PCT or aninternational design application designating theUnited States under the Hague Agreement is deemedto be a publication under 35 U.S.C. 122(b). Notethat the U.S. is automatically designated in allinternational applications under the PCT filed on orafter January 1, 2004.

If a redacted copy of the application was used forthe patent application publication, the copy of theapplication will be limited to the redacted copy ofthe application and the redacted materials providedunder 37 CFR 1.217(d).

See paragraph I., above, for information pertainingto access to Image File Wrapper (IFW) applications.Published applications maintained in the IFW systemare available on the USPTO website in the publicPatent Application Information Retrieval (PAIR)system. If the published patent application is pendingand it is not maintained in the IFW system, the paperapplication file itself will not be available to thepublic for inspection. Only copies of the applicationfile may be obtained pursuant to 37 CFR1.14(a)(1)(iii). If the published patent application isabandoned, the entire application is available to thepublic for inspection and obtaining copies. See37 CFR 1.11(a).

III. UNPUBLISHED ABANDONED AND PENDINGAPPLICATIONS (INCLUDING PROVISIONALAPPLICATIONS) THAT ARE IDENTIFIED



Rev. 07.2015, October 2015100-11



*****

(iv) Unpublished abandoned applications(including provisional applications) that are identified or reliedupon. The file contents of an unpublished, abandonedapplication may be made available to the public if the applicationis identified in a U.S. patent, a statutory invention registration,a U.S. patent application publication, an international publicationof an international application under PCT Article 21(2), or apublication of an international registration under HagueAgreement Article 10(3) of an international design applicationdesignating the United States. An application is considered tohave been identified in a document, such as a patent, when theapplication number or serial number and filing date, first namedinventor, title, and filing date or other application specificinformation are provided in the text of the patent, but not whenthe same identification is made in a paper in the file contents ofthe patent and is not included in the printed patent. Also, thefile contents may be made available to the public, upon a writtenrequest, if benefit of the abandoned application is claimed under35 U.S.C. 119(e), 120, 121, 365, or 386(c) in an applicationthat has issued as a U.S. patent, or has published as a statutoryinvention registration, a U.S. patent application publication, aninternational publication of an international application underPCT Article 21(2), or a publication of an internationalregistration under Hague Agreement Article 10(3). A copy ofthe application-as-filed, the file contents of the application, ora specific document in the file of the application may beprovided to any person upon written request and payment of theappropriate fee (§ 1.19(b)).

(v) Unpublished pending applications (includingprovisional applications) whose benefit is claimed. A copy ofthe file contents of an unpublished pending application may beprovided to any person, upon written request and payment ofthe appropriate fee (§ 1.19(b)), if the benefit of the applicationis claimed under 35 U.S.C. 119(e), 120, 121, 365(c), or 386(c)in an application that has issued as a U.S. patent, or in anapplication that has published as a statutory inventionregistration, a U.S. patent application publication, aninternational publication of an international application underPCT Article 21(2), or a publication of an internationalregistration under Hague Agreement Article 10(3). A copy ofthe application-as-filed or a specific document in the file of thepending application may also be provided to any person uponwritten request and payment of the appropriate fee (§ 1.19(b)).The Office will not provide access to the paper file of a pendingapplication, except as provided in paragraph (c) or (i) of thissection.

(vi) Unpublished pending applications (includingprovisional applications) that are incorporated by reference orotherwise identified. A copy of the application as originallyfiled of an unpublished pending application may be providedto any person, upon written request and payment of theappropriate fee (§ 1.19(b)), if the application is incorporated byreference or otherwise identified in a U.S. patent, a statutoryinvention registration, a U.S. patent application publication, aninternational publication of an international application under

PCT Article 21(2), or a publication of an internationalregistration under Hague Agreement Article 10(3) of aninternational design application designating the United States.The Office will not provide access to the paper file of a pendingapplication, except as provided in paragraph (c) or (i) of thissection.

*****

Abandoned applications meeting the requirementsof 37 CFR 1.14(a)(1)(iv) and any application that isopen to the public under 37 CFR 1.11 may beobtained by any person upon written request to theFile Information Unit (FIU) without the specificwritten authority of the inventor, applicant in anapplication filed on or after September 16, 2012,assignee, attorney or agent of record or Director.The following abandoned applications are availablefrom the FIU: (A) An abandoned application referredto in a U.S. patent application publication or U.S.patent; and (B) a pending File Wrapper Continuationapplication (FWC) filed under former 37 CFR 1.62of an abandoned application that meets therequirements of 37 CFR 1.14(a)(1)(iv). Under former37 CFR 1.62(f), where access is permitted to anapplication within the file wrapper of a FWCapplication, the applicant has waived the right tokeep all earlier filed applications in the same filewrapper in confidence.

37 CFR 1.14(a)(1)(i) relates only to United Statesapplications that are open to public inspection. See37 CFR 1.14(g)(3)-(5) for access to internationalapplications where the U.S. is designated. See alsoMPEP § 110. See 37 CFR 1.14(j) for access tointernational design applications. If an abandonedapplication is referred to in an internationalpublication of an international application underPCT Article 21(2), or in a publication of aninternational registration under Hague AgreementArticle 10(3), access to the abandoned applicationis available under 37 CFR 1.14(a)(1)(iv).

An abandoned non-IFW application identified in aU.S. patent application publication, U.S. patent or aU.S. application that is open to public inspectionmay be ordered for inspection by any member of thepublic through the FIU. An abandoned file receivedby a member of the public must be returned to thecharge counter in the FIU before closing the sameday it is received. If the abandoned application is

100-12Rev. 07.2015, October 2015


contained within a pending FWC application, therequester will generally be directed to the appropriateTechnology Center (TC) to inquire as to theavailability of the pending FWC application. If thepending FWC application is available, it will beforwarded to the FIU for the requester to pick-up.See paragraph I., above, for information pertainingto access to IFW applications.

The incorporation by reference of a pendingapplication in a U.S. patent application publication,a U.S. patent, a published international applicationpublished in accordance with PCT Article 21(2), apublication of an international registration underHague Agreement Article 10(3), or a statutoryinvention registration constitutes a specialcircumstance under 35 U.S.C. 122 warranting thata copy of the application-as-filed be provided uponwritten request as provided in 37 CFR 1.14(a)(1)(vi).In addition, if a U.S. patent application publication,a U.S. patent, a published international application,or a published international registration claimsbenefit under 35 U.S.C. 119(e), 120, 121, 365, or386 to a U.S. patent application, a copy of thatapplication-as-filed may be provided upon writtenrequest (see 37 CFR 1.14(a)(1)(v)), or be availablethrough the public PAIR system if the applicationis maintained in the IFW system. A benefit claim inan international design application that does notdesignate the United States is not a claim under 35U.S.C. 119(e), 120, 121, 365 or 386. The written

request, including a copy of the page of the patentapplication publication, U.S. patent, publishedinternational application, or published internationalregistration including the incorporation by referenceor specific reference under 35 U.S.C. 119(e), 120,121, 365, or 386 and the requisite fee set forth in 37CFR 1.19(b)(1), should be directed to theCertification Division. However, an incorporationby reference that is made as part of a transmittalletter for the application, or that is a part of the textof the application that has been canceled and whichdoes not appear as part of the printed patent, maynot be relied upon to obtain a copy of the applicationas originally filed. A petition for access with anexplanation of special circumstances other than thenot-printed incorporation by reference will berequired. See 37 CFR 1.14(a)(1)(vii).

Copies of a patent application-as-filed and thecontents of a patent application file wrapper may beordered on-line or requested by facsimile from theCertification Division. Payment of the appropriatefee under 37 CFR 1.19(b) may be made by USPTODeposit Account, American Express®, Discover®,MasterCard®, or Visa® by any person having a rightto access to the originally filed application or patent.The Office does not provide for access to non-UnitedStates applications.

Form PTO/SB/68 may be used to request access.

Rev. 07.2015, October 2015100-13


100-14Rev. 07.2015, October 2015


Rev. 07.2015, October 2015100-15


IV. ACCESS WHERE PART OF AN APPLICATIONIS INCORPORATED BY REFERENCE IN A U.S.PATENT APPLICATION PUBLICATION OR A U.S.PATENT

37 CFR 1.14(a)(1)(vi) permits a member of thepublic, without a petition for access, to obtain a copyof a pending application as originally filed, whenthe application is incorporated by reference in a U.S.patent application publication or a U.S. patent, uponthe filing of an appropriate request and the paymentof the required fee. However, if only part of theapplication is incorporated by reference, for example,where an application states, “the disclosure of a valveon page 5, lines 5-35, of application No.XX/YYY,YYY, is hereby incorporated byreference,” then a petition for access is required toobtain access to or a copy of the incorporatedmaterial. Incorporation by reference of part of anapplication in a U.S. patent application publicationor a U.S. patent constitutes a special circumstancesunder 35 U.S.C. 122(a) warranting that access tothat part of the original disclosure of the applicationbe granted on petition. The incorporation byreference will be interpreted as a waiver ofconfidentiality of only that part of the originaldisclosure as filed, and not the entire application file. In re Gallo, 231 USPQ 496 (Comm’r Pat. 1986). Ifapplicant objects to access to the entire applicationfile, applicant must file two copies of the informationincorporated by reference along with the objection.In the example given, applicant would be requiredto provide two copies of page 5, lines 5-35 of theXX/YYY,YYY application. Failure to provide thematerial within the time period provided will resultin the entire application content (includingprosecution history) being made available to thepetitioner. The Office will not attempt to separatethe noted materials from the remainder of theapplication. Compare In re Marsh Eng’g. Co., 1913C.D. 183 (Comm’r Pat. 1913).

V. PETITION FOR ACCESS BY THIRD PARTY




*****

(vii) When a petition for access or a power toinspect is required. Applications that were not published orpatented, that are not the subject of a benefit claim under35U.S.C. 119(e), 120, 121, 365(c), or 386(c) in an application thathas issued as a U.S. patent, an application that has published asa statutory invention registration, a U.S. patent applicationpublication, an international publication of an internationalapplication under PCT Article 21(2) , or a publication of aninternational registration under Hague Agreement Article 10(3),or are not identified in a U.S. patent, a statutory inventionregistration, a U.S. patent application publication, aninternational publication of an international application underPCT Article 21(2) , or a publication of an internationalregistration under Hague Agreement Article 10(3) of aninternational design application designating the United States,are not available to the public. If an application is identified inthe file contents of another application, but not the publishedpatent application or patent itself, a granted petition for access(see paragraph (i)) or a power to inspect (see paragraph (c) ofthis section) is necessary to obtain the application, or a copy ofthe application.

*****

(i) Access or copies in other circumstances. The Office,either sua sponte or on petition, may also provide access orcopies of all or part of an application if necessary to carry outan Act of Congress or if warranted by other specialcircumstances. Any petition by a member of the public seekingaccess to, or copies of, all or part of any pending or abandonedapplication preserved in confidence pursuant to paragraph (a)of this section, or any related papers, must include:

(1) The fee set forth in § 1.17(g); and

(2) A showing that access to the application isnecessary to carry out an Act of Congress or that specialcircumstances exist which warrant petitioner being grantedaccess to all or part of the application.

*****

Any interested party may file a petition,accompanied by the petition fee, to the Director foraccess to an application. Inasmuch as the post officeaddress is necessary for the complete identificationof the petitioner, it should always be includedcomplete with ZIP Code number. In addition,telephone and facsimile numbers should be providedto expedite handling of the petition. Petitions foraccess are handled in the Office of Patent LegalAdministration, unless the application is involvedin an interference, derivation proceeding, or trial

100-16Rev. 07.2015, October 2015


before the Patent Trial and Appeal Board. See MPEP§ 1002.02(b), item 21.

The petition may be filed either with proof of serviceof copy upon the inventor, applicant in an applicationfiled on or after September 16, 2012, assignee ofrecord, or attorney or agent of record in theapplication to which access is sought, or the petitionmay be filed in duplicate, in which case the duplicatecopy will be sent by the Office to the inventor,applicant in an application filed on or afterSeptember 16, 2012, assignee of record, or attorneyor agent of record in the application (hereinafter“applicant”). A separate petition, with fee, must befiled for each application file to which access isdesired. Each petition should show not only whyaccess is desired, but also why petitioner believeshe or she is entitled to access. The applicant willnormally be given a limited period such as 3 weekswithin which to state any objection to the grantingof the petition for access and reasons why it shouldbe denied. If applicant states that he or she has noobjection to the requested access, the petition willbe granted. If objection is raised or applicant doesnot respond, the petition will be decided on therecord. If access is granted to the application, anyobjections filed by the applicant will be available tothe petitioner since these papers are in the applicationfile. If access to the application is denied, petitionerwill not receive copies of any objections filed by theapplicant. A determination will be made whether“special circumstances” are present which warranta grant of access under 35 U.S.C. 122. See belowwhen the application is the basis of a claim forbenefit of an earlier filing date under 35 U.S.C. 120or part of the application is incorporated by referencein a United States patent. “Special circumstances”could be found where an applicant has relied uponhis or her application as a means to interfere with acompetitor’s business or customers. See, e.g., In reCrossman, 187 USPQ 367 (PTO Solicitor 1975);and In re Trimless Cabinets, 128 USPQ 95(Comm’r Pat. 1960). Furthermore, “specialcircumstances” could be found where an attorney oragent of record in an application in which aprovisional double patenting rejection is made doesnot have power of attorney in the copendingapplication having a common assignee or inventor.However, a more expeditious means of obtaining

access would be to obtain power to inspect from anassignee or inventor. See MPEP §§ 104 and 106.01.

VI. ACCESS WHERE PATENT CLAIMS 35 U.S.C.119(e), 120, 121, 365(c), or 386(c) BENEFIT




*****

(iv) Unpublished abandoned applications(including provisional applications) that are identified or reliedupon. The file contents of an unpublished, abandonedapplication may be made available to the public if the applicationis identified in a U.S. patent, a statutory invention registration,a U.S. patent application publication, an international publicationof an international application under PCT Article 21(2) , or apublication of an international registration under HagueAgreement Article 10(3) of an international design applicationdesignating the United States. An application is considered tohave been identified in a document, such as a patent, when theapplication number or serial number and filing date, first namedinventor, title, and filing date or other application specificinformation are provided in the text of the patent, but not whenthe same identification is made in a paper in the file contents ofthe patent and is not included in the printed patent. Also, thefile contents may be made available to the public, upon a writtenrequest, if benefit of the abandoned application is claimed under35 U.S.C. 119(e), 120, 121, 365(c), or 386(c) in an applicationthat has issued as a U.S. patent, or has published as a statutoryinvention registration, a U.S. patent application publication, aninternational publication of an international application underPCT Article 21(2) , or a publication of an internationalregistration under Hague Agreement Article 10(3). A copy ofthe application-as-filed, the file contents of the application, ora specific document in the file of the application may beprovided to any person upon written request and payment of theappropriate fee (§ 1.19(b)).

(v) Unpublished pending applications (includingprovisional applications) whose benefit is claimed. A copy ofthe file contents of an unpublished pending application may beprovided to any person, upon written request and payment ofthe appropriate fee (§ 1.19(b)), if the benefit of the applicationis claimed under 35 U.S.C. 119(e), 120, 121, 365(c), or 386(c)in an application that has issued as a U.S. patent, or in anapplication that has published as a statutory inventionregistration, a U.S. patent application publication, aninternational publication of an international applicationunderPCT Article 21(2) , or a publication of an internationalregistration under Hague Agreement Article 10(3). A copy of

Rev. 07.2015, October 2015100-17


the application-as-filed or a specific document in the file of thepending application may also be provided to any person uponwritten request and payment of the appropriate fee (§ 1.19(b)).The Office will not provide access to the paper file of a pendingapplication, except as provided in paragraph (c) or (i) of thissection.

(vi) Unpublished pending applications (includingprovisional applications) that are incorporated by reference orotherwise identified. A copy of the application as originallyfiled of an unpublished pending application may be providedto any person, upon written request and payment of theappropriate fee (§ 1.19(b)), if the application is incorporated byreference or otherwise identified in a U.S. patent, a statutoryinvention registration, a U.S. patent application publication, aninternational publication of an international application underPCT Article 21(2) , or a publication of an internationalregistration under Hague Agreement Article 10(3) of aninternational design application designating the United States.The Office will not provide access to the paper file of a pendingapplication, except as provided in paragraph (c) or (i) of thissection.

*****

Whenever a patent relies on the filing date of anearlier but still pending application, the Officepermits an applicant to obtain a copy of the priorapplication, either as originally filed or of thepending file history, upon written request (to theOffice of Public Records) and payment of theappropriate fee. Furthermore, after publication of aU.S. patent, a U.S. patent application publication, astatutory invention registration, an internationalapplication under PCT Article 21(2), or aninternational registration under Hague AgreementArticle 10(3), the file contents of any abandonedapplication identified or relied upon in such apublication are available pursuant to 37 CFR1.14(a)(1)(iv). If the application is pending andbenefit of the application is claimed pursuant to 35U.S.C.119(e), 120, 121, 365(c), or 386(c) in such apatent document, then the file contents of theapplication are available pursuant to 37 CFR1.14(a)(1)(v). Such a patent application is availablethrough the public PAIR system if the applicationis maintained in the IFW system.

VII. ACCESS TO PROVISIONAL APPLICATIONS

In provisional applications, access or certified copieswill only be given to parties with written authorityfrom a named inventor, the assignee of record, theattorney or agent of record, or, for an application

filed on or after September 16, 2012, an applicantother than an inventor. Since provisional applicationsdo not require an oath or declaration, there may beno power of attorney in the application. If there isno power of attorney in the provisional application,a certified copy requested by the registered attorneyor agent named in the papers accompanying theprovisional application papers will be supplied tothe correspondence address of the provisionalapplication. Provisional applications are alsoavailable in the same manner as any otherapplication. For example, an application that is reliedupon for priority in a U.S. patent and is abandonedis available under 37 CFR 1.14(a)(1)(iv) and, as aresult may be available through public PAIR.

VIII. APPLICATION AT THE PATENT TRIAL ANDAPPEAL BOARD

The Patent Trial and Appeal Board handles allrequests for access to, or copies of Office recordsdirectly related to, applications involved ininterferences, derivation proceedings, or trials. See37 CFR 41.109 and 37 CFR 42.3. See also MPEPChapter 2300.

IX. DEFENSIVE PUBLICATIONS

The entire application file of a defensive publicationis available to the public for inspection and obtainingcopies. See MPEP § 711.06.

X. REISSUE APPLICATIONS

37 CFR 1.11(b) opens reissue applications toinspection by the general public. 37 CFR 1.11(b)also provides for announcement of the filings ofreissue applications in the Official Gazette (exceptfor continued prosecution applications filed under37 CFR 1.53(d)). This announcement givesinterested members of the public an opportunity tosubmit to the examiner information pertinent topatentability of the reissue application.

IFW reissue application files are open to inspectionby the general public by way of Public PAIR via theUSPTO Internet site. In viewing the images of thefiles, members of the public will be able to view theentire content of the reissue application file history.To access Public PAIR, a member of the public

100-18Rev. 07.2015, October 2015


would (A) go to the USPTO website atwww.uspto.gov, (B) click on “Check Status” underthe “Patents” column, (C) click on Public PAIR, and(D) enter the reissue application number.

XI. REQUEST FOR REEXAMINATION

An announcement of the filing of each request forreexamination in which the entire fee has been paid,and of each reexamination ordered at the initiativeof the Director under 37 CFR 1.520, will bepublished in the Official Gazette. A reexaminationfile is normally NOT open to inspection by thegeneral public until the file has been scanned intothe IFW system, at which point the file is open toinspection by the public by way of Public PAIR viathe USPTO Internet site. In viewing the images ofthe reexamination proceedings, members of thepublic will be able to view the entire contents of thereexamination file with the exception of non-patentliterature. See also MPEP § 2232.

XII. DECISIONS BY THE DIRECTOR

37 CFR 1.14 Patent applications preserved in confidence.*****

(e) Decisions by the Director. Any decision by the Directorthat would not otherwise be open to public inspection may bepublished or made available for public inspection if:

(1) The Director believes the decision involves aninterpretation of patent laws or regulations that would be ofprecedential value; and

(2) The applicant is given notice and an opportunity toobject in writing within two months on the ground that thedecision discloses a trade secret or other confidentialinformation. Any objection must identify the deletions in thetext of the decision considered necessary to protect theinformation, or explain why the entire decision must be withheldfrom the public to protect such information. An applicant orparty will be given time, not less than twenty days, to requestreconsideration and seek court review before any portions of adecision are made public under this paragraph over his or herobjection

*****

37 CFR 41.6 Public availability of Board records.

(a) Publication.

(1) Generally. Any Board action is available for publicinspection without a party’s permission if rendered in a file opento the public pursuant to § 1.11 of this title or in an applicationthat has been published in accordance with §§ 1.211 to 1.221of this title. The Office may independently publish any Boardaction that is available for public inspection.

(2) Determination of special circumstances. Any Boardaction not publishable under paragraph (a)(1) of this sectionmay be published or made available for public inspection if theDirector believes that special circumstances warrant publicationand a party does not, within two months after being notified ofthe intention to make the action public, object in writing on theground that the action discloses the objecting party’s trade secretor other confidential information and states with specificity thatsuch information is not otherwise publicly available. If the actiondiscloses such information, the party shall identify the deletionsin the text of the action considered necessary to protect theinformation. If the affected party considers that the entire actionmust be withheld from the public to protect such information,the party must explain why. The party will be given time, notless than twenty days, to request reconsideration and seek courtreview before any contested portion of the action is made publicover its objection.

(b) Record of proceeding.

(1) The record of a Board proceeding is available tothe public unless a patent application not otherwise available tothe public is involved.

(2) Notwithstanding paragraph (b)(1) of this section,after a final Board action in or judgment in a Board proceeding,the record of the Board proceeding will be made available tothe public if any involved file is or becomes open to the publicunder § 1.11 of this title or an involved application is or becomespublished under §§ 1.211 to 1.221 of this title.

37 CFR 1.14(e) states the conditions under whichsignificant decisions by the Director that would nototherwise be open to public inspection will be madeavailable to the public. 37 CFR 41.6 describes theprocedure for making a decision of the Patent Trialand Appeal Board available to the public. Thesesections are applicable to decisions deemed by theDirector to involve an interpretation of patent lawsor regulation that would be of significantprecedential value, where such decisions arecontained in either pending or abandonedapplications or in Board records not otherwise opento the public. It is applicable whether or not thedecision is a final decision of the U.S. Patent andTrademark Office.

37 CFR 1.14(e) and 37 CFR 41.6 are considered toplace a duty on the U.S. Patent and Trademark Officeto identify significant decisions and to take the stepsnecessary to inform the public of such decisions, bypublication of such decisions, in whole or in part. Itis anticipated, however, that no more than a fewdozen decisions per year will be deemed of sufficientimportance to warrant publication under the authorityof this section.

Rev. 07.2015, October 2015100-19


http://www.uspto.gov

XIII. FOIA REQUESTS

37 CFR 102.4 Requirements for making requests.

(a) A request for USPTO records that are not customarilymade available to the public as part of USPTO’s regularinformational services must be in writing, and shall be processedunder FOIA, regardless of whether FOIA is mentioned in therequest. Requests should be sent to the USPTO FOIA Officer,United States Patent and Trademark Office, P.O. Box 1450,Alexandria, Virginia 22313-1450 (records FOIA requires to bemade regularly available for public inspection and copying areaddressed in § 102.2(c)). For the quickest handling, the requestletter and envelope should be marked “Freedom of InformationAct Request.” For requests for records about oneself, § 102.24contains additional requirements. For requests for records aboutanother individual, either a written authorization signed by thatindividual permitting disclosure of those records to the requesteror proof that individual is deceased (for example, a copy of adeath certificate or an obituary) facilitates processing the request.

(b) The records requested must be described in enoughdetail to enable USPTO personnel to locate them with areasonable amount of effort. Whenever possible, a request shouldinclude specific information about each record sought, such asthe date, title or name, author, recipient, and subject matter ofthe record, and the name and location of the office where therecord is located. Also, if records about a court case are sought,the title of the case, the court in which the case was filed, andthe nature of the case should be included. If known, any filedesignations or descriptions for the requested records should beincluded. In general, the more specifically the request describesthe records sought, the greater the likelihood that USPTO willlocate those records. If the FOIA Officer determines that arequest does not reasonably describe records, the FOIA Officerwill inform the requester what additional information is neededor why the request is otherwise insufficient. The FOIA Officeralso may give the requester an opportunity to discuss the requestso that it may be modified to meet the requirements of thissection.

Many decisions of the Office are available on theFOIA section of the USPTO website atwww.uspto .gov/ learning-and-resources/ip-policy/electronic-freedom-information-act-e-foia.See 37 CFR Part 102, Subpart A, “Freedom ofInformation Act,” for rules pertaining to FOIArequests.

104 Power to Inspect Application [R-07.2015]

I. AUTHORITY TO GRANT ACCESS -APPLICATION FILED ON OR AFTERSEPTEMBER 16, 2012


(c) Power to inspect a pending or abandoned application.Access to an application may be provided to any person if the

application file is available, and the application contains writtenauthority (e.g., a power to inspect) granting access to suchperson. The written authority must be signed by:

(1) The applicant;

(2) A patent practitioner of record;

(3) The assignee or an assignee of an undivided partinterest;

(4) The inventor or a joint inventor; or

(5) A registered attorney or agent named in the papersaccompanying the application papers filed under § 1.53 or thenational stage documents filed under § 1.495, if a power ofattorney has not been appointed under § 1.32.

*****

For applications filed on or after September 16,2012, the applicant, a patent practitioner of record,the assignee or an assignee of an undivided partinterest, or an inventor may provide a writtenauthority for access to a pending or abandonedapplication kept in confidence under 35 U.S.C.122(a), except as provided in 37 CFR 1.11, 1.14,41.6, or 42.412. The written authority must identifythe application to be inspected and the name of theperson authorized to have access, and will be madeof record. Access provided upon the written orderof the Director will also become a part of the recordof the application.

A person acting in a representative capacity under37 CFR 1.34 may execute a power to inspect anapplication only if the patent practitioner was namedin the application transmittal papers filed under 37CFR 1.53 or the national stage documents filed under37 CFR 1.495 and a power of attorney has not beenappointed under 37 CFR 1.32. Once a power ofattorney has been filed, any previously filed powerto inspect signed by a patent practitioner who doesnot have a power of attorney will cease to haveeffect. For a discussion of power of attorney in anapplication, see MPEP § 402.

II. AUTHORITY TO GRANT ACCESS -APPLICATION FILED BEFORE SEPTEMBER 16,2012

37 CFR 1.14 (pre-AIA) Patent applications preserved inconfidence.

*****

(c) Power to inspect a pending or abandoned application.Access to an application may be provided to any person if theapplication file is available, and the application contains written

100-20Rev. 07.2015, October 2015


http://www.uspto.gov/learning-and-resources/ip-policy/electronic-freedom-information-act-e-foia

http://www.uspto.gov/learning-and-resources/ip-policy/electronic-freedom-information-act-e-foia

authority (e.g., a power to inspect) granting access to suchperson. The written authority must be signed by:

(1) An applicant;

(2) An attorney or agent of record;

(3) An authorized official of an assignee of record(made of record pursuant to § 3.71 of this chapter); or

(4) A registered attorney or agent named in the papersaccompanying the application papers filed under § 1.53 or thenational stage documents filed under § 1.495, if an executedoath or declaration pursuant to § 1.63 or § 1.497 has not beenfiled.

*****

For applications filed prior to September 16, 2012,if an executed oath or declaration pursuant to 37CFR 1.63 or 1.497 has been filed, no person but theapplicant (any one of joint applicants), an attorneyor agent of record (if a power of attorney was filed),or an assignee whose assignment is of record willbe permitted to have access to the file of any pendingapplication kept in confidence under 35 U.S.C.122(a), except as provided for under 37 CFR 1.11,1.14, 41.6, or 42.412, unless written authority fromone of the above indicated parties, identifying theapplication to be inspected and the name of theperson authorized to have access, is made of record,or upon the written order of the Director, which willalso become a part of the record of the application.

A person acting in a representative capacity under37 CFR 1.34 may execute a power to inspect anapplication only if the attorney or agent was namedin the application transmittal papers filed under 37CFR 1.53 or the national stage documents filed under37 CFR 1.495 and an executed oath or declarationhas not been filed. Once an executed oath ordeclaration has been filed, any previously filedpower to inspect signed by a registered attorney oragent who does not have a power of attorney willcease to have effect. For a discussion of power ofattorney in an application, see MPEP § 402.

III. POWER TO INSPECT

Powers to inspect are not accepted in Image FileWrapper (IFW) applications. IFW applications areavailable through the Private Patent ApplicationInformation Retrieval (PAIR) system, and pro seapplicants and attorneys of record have direct accessto the IFW through Private PAIR (when a Customer

Number is associated with the correspondenceaddress for the application, and the applicant orattorney has access to Private PAIR for the customernumber). In addition, IFW application files ofpublished applications or patents are available atleast through Public PAIR. If for some reason anapplicant, inventor, assignee, or attorney or agent ofrecord cannot view an IFW application throughPAIR, then a copy of the application must bepurchased from the Office of Public Records. A"power to inspect" is, in effect, the same as a "powerto inspect and make copies."

Where an applicant relied on his or her applicationas a means to interfere with a competitor’s businessor customers, permission to inspect the applicationmay be given the competitor by the Director. Suchpermission is via petition for access under 37 CFR1.14(i).

An unrestricted power to inspect given by anapplicant or inventor is, under existing practice,recognized as in effect until and unless rescinded.The same is true in the case of one given by theattorney or agent of record, or assignee so long assuch attorney or agent, or assignee retains his or herconnection with the application.

Permission to inspect given by the Director,however, is not of a continuing nature, since theconditions that justified the permission to inspectwhen given may not apply at a later date.

IV. ACCESS TO PATENT APPLICATIONS(PROVISIONAL AND NONPROVISIONAL) ANDBOARD RECORDS

In order to ensure that access to patent applications,other than applications that are available pursuantto 37 CFR 1.11 or 1.14, and Board records are givenonly to persons who are entitled thereto or who arespecially authorized to have access under 37 CFR1.11, 1.14 and 41.6 and to ensure also that the filerecord identifies any such specially authorizedperson who has been given access to a file, thefollowing practice will be observed by all personnelof the U.S. Patent and Trademark Office:

(A) Access, as provided for in the rules, will begiven on oral request to any applicant, inventor,patentee, assignee, or attorney or agent of record in

Rev. 07.2015, October 2015100-21


an application or patent only upon proof of identityor upon recognition based on personal acquaintance.

(B) Where a power of attorney or authorizationof agent was given to a registered firm prior to July2, 1971, access will be given upon oral request as inparagraph (A) above to any registered member oremployee of the firm who has signatory power forthe firm.

(C) Unregistered employees of attorneys oragents, public stenographers, and all other personsnot within the provisions of paragraphs (A) and (B)above will be given access only upon presentationof a written authorization for access (power toinspect) signed by a person specified in paragraph(A) above, which authorization will be entered as apart of the official file. The power to inspect must specifically name the person who is entitled toinspect and copy the application. An associate orrepresentative of the named person is not entitled toaccess to the application on behalf of the authorizedperson. Further, the power to inspect mustspecifically identify the application by applicationnumber and be limited to a single application. FormPTO/SB/67 may be used for this purpose.

(D) In provisional applications, access orcertified copies may only be requested by partieswith written authority from a named inventor, theapplicant, the assignee of record, or the attorney oragent of record, unless the application is availablepursuant to 37 CFR 1.14(a)(1)(iv)-(vi). Sinceprovisional applications do not require an oath ordeclaration, there may be no power of attorney inthe application. If the person requesting a certifiedcopy is not a named inventor, the applicant, assigneeof record, or an attorney or agent of record, therequested certified copy will be supplied to thecorrespondence address of the provisionalapplication

105 Suspended or Excluded PractitionerCannot Inspect [R-11.2013]

U.S. Patent and Trademark Office (USPTO)employees are forbidden to hold either oral or writtencommunication with an attorney or agent who hasbeen suspended or excluded from practice by theUSPTO regarding an application unless it is one inwhich said attorney or agent is an inventor or the

applicant. Power to inspect given to such an attorneyor agent will not be accepted.

106 Control of Inspection by Assignee[R-11.2013]

The applicant or assignee of record of the entireinterest in an application may file an application orintervene in the prosecution of the application,appointing an attorney or agent of his or her ownchoice. See 37 CFR 1.46 and 3.71. Such anapplication filing or intervention, however, does notexclude the inventor from access to the applicationto see that it is being prosecuted properly, unless theapplicant or assignee makes specific request to thateffect. Any request to prevent the inventor fromobtaining access to the file should be filed as aseparate paper, 37 CFR 1.4(c), and should bedirected to the Office of Petitions. If the request isgranted, the inventor will be informed that he or shewill only be permitted to inspect the application onsufficient showing why such inspection is necessaryto conserve his or her rights. Of course, after theapplication has published pursuant to 35 U.S.C.122(b), the application will be available to the publicand any restriction on the inventor to access his orher application previously granted will no longer bein effect.

106.01 Rights of Assignee of Part Interest[R-11.2013]

While it is only the assignee of record of the entireinterest who can intervene in the prosecution of anapplication or interference to the exclusion of theapplicant (or, for applications filed on or afterSeptember 16, 2012, can prosecute the applicationafter becoming the applicant under 37 CFR 1.46),an assignee of a part interest or a licensee ofexclusive right is entitled to inspect the application.For information pertaining to prosecution by theassignee, see MPEP § 324 (for applications filedbefore September 16, 2012) and MPEP § 325 (forapplications filed on or after September 16, 2012).

100-22Rev. 07.2015, October 2015


107-109 [Reserved]

110 Confidential Nature of InternationalApplications [R-07.2015]

PCT Article 30

Confidential Nature of the International Application.

(1)(a) Subject to the provisions of subparagraph (b),the International Bureau and the International SearchingAuthorities shall not allow access by any person or authority tothe international application before the international publicationof that application, unless requested or authorized by theapplicant.

(b) The provisions of subparagraph (a) shall not applyto any transmittal to the competent International SearchingAuthority, to transmittals provided for under Article 13, and tocommunications provided for under Article 20.

(2)(a) No national Office shall allow access to theinternational application by third parties unless requested orauthorized by the applicant, before the earliest of the followingdates:

(i) date of the international publication of theinternational application,

(ii) date of receipt of the communication of theinternational application under Article 20,

(iii) date of receipt of a copy of the internationalapplication under Article 22.

(b) The provisions of subparagraph (a) shall not preventany national Office from informing third parties that it has beendesignated, or from publishing that fact. Such information orpublication may, however, contain only the following data:identification of the receiving Office, name of the applicant,international filing date, international application number, andtitle of the invention.

(c) The provisions of subparagraph (a) shall not preventany designated Office from allowing access to the internationalapplication for the purposes of the judicial authorities.

(3) The provisions of paragraph (2)(a) shall apply to anyreceiving Office except as so far as transmittals provided forunder Article 12(1) are concerned.

(4) For the purposes of this Article, the term “access” coversany means by which third parties may acquire cognizance,including individual communication and general publication,provided, however, that no national Office shall generallypublish an international application or its translation before theinternational publication or, if international publication has nottaken place by the expiration of 20 months from the prioritydate, before the expiration of 20 months from the said prioritydate.

PCT Article 38

Confidential Nature of the International PreliminaryExamination.

(1) Neither the International Bureau nor the InternationalPreliminary Examining Authority shall, unless requested orauthorized by the applicant, allow access within the meaning,and with the proviso, of Article 30(4) to the file of theinternational preliminary examination by any person or authorityat any time, except by the elected Offices once the internationalpreliminary examination report has been established.

(2) Subject to the provisions of paragraph (1) and Articles36(1) and (3) and 37(3)(b), neither the International Bureau northe International Preliminary Examining Authority shall, unlessrequested or authorized by the applicant, give information onthe issuance or non-issuance of an international preliminaryexamination report and on the withdrawal or non-withdrawalof the demand or of any election.

35 U.S.C. 368 Secrecy of certain inventions; filinginternational applications in foreign countries.

(a) International applications filed in the Patent andTrademark Office shall be subject to the provisions of chapter17.

(b) In accordance with article 27(8) of the treaty, the filingof an international application in a country other than the UnitedStates on the invention made in this country shall be consideredto constitute the filing of an application in a foreign countrywithin the meaning of chapter 17, whether or not the UnitedStates is designated in that international application.

(c) If a license to file in a foreign country is refused or ifan international application is ordered to be kept secret and apermit refused, the Patent and Trademark Office when actingas a Receiving Office, International Searching Authority, orInternational Preliminary Examining Authority, may not disclosethe contents of such application to anyone not authorized toreceive such disclosure.

Although most international applications arepublished soon after the expiration of 18 monthsfrom the priority date, PCT Article 21(2)(a), suchpublication does not open up the Home Copy orSearch Copy to the public for inspection, except asprovided in 37 CFR 1.14(g) .


(g) International applications.

(1) Copies of international application files forinternational applications which designate the U.S. and whichhave been published in accordance with PCT Article 21(2), orcopies of a document in such application files, will be furnishedin accordance with PCT Articles 30 and 38 and PCT Rules 94.2and 94.3, upon written request including a showing that thepublication of the application has occurred and that the U.S.

Rev. 07.2015, October 2015100-23


was designated, and upon payment of the appropriate fee (see§ 1.19(b)), if:

(i) With respect to the Home Copy (the copy ofthe international application kept by the Office in its capacityas the Receiving Office, see PCT Article 12(1)), the internationalapplication was filed with the U.S. Receiving Office;

(ii) With respect to the Search Copy (the copy ofan international application kept by the Office in its capacity asthe International Searching Authority, see PCT Article 12(1)),the U.S. acted as the International Searching Authority, exceptfor the written opinion of the International Searching Authoritywhich shall not be available until the expiration of thirty monthsfrom the priority date; or

(iii) With respect to the Examination Copy (thecopy of an international application kept by the Office in itscapacity as the International Preliminary Examining Authority),the United States acted as the International PreliminaryExamining Authority, an International Preliminary ExaminationReport has issued, and the United States was elected.

(2) A copy of an English language translation of apublication of an international application which has been filedin the United States Patent and Trademark Office pursuant to35 U.S.C. 154(d)(4) will be furnished upon written requestincluding a showing that the publication of the application inaccordance with PCT Article 21(2) has occurred and that theU.S. was designated, and upon payment of the appropriate fee(§ 1.19(b)(4)).

(3) Access to international application files forinternational applications which designate the U.S. and whichhave been published in accordance with PCT Article 21(2), orcopies of a document in such application files, will be permittedin accordance with PCT Articles 30 and 38 and PCT Rules 44 ter .1, 94.2 and 94.3, upon written request including a showingthat the publication of the application has occurred and that theU.S. was designated.

(4) In accordance with PCT Article 30, copies of aninternational application-as-filed under paragraph (a) of thissection will not be provided prior to the international publicationof the application pursuant to PCT Article 21(2).

(5) Access to international application files underparagraphs (a)(1)(i) through (a)(1)(vi) and (g)(3) of this sectionwill not be permitted with respect to the Examination Copy inaccordance with PCT Article 38.

*****

37 CFR 1.14(g) applies to international applicationshaving an international filing date on or afterNovember 29, 2000. After publication of anapplication under 35 U.S.C. 122(b), the USPTO willmake available copies of the application files andalso allow for access to those files in accordancewith 37 CFR 1.14(a). Therefore, after publicationof an international application designating the U.S.under PCT Article 21, the USPTO will make

available copies of, and allow access to, thoseinternational application files which are kept in theUSPTO (see 37 CFR 1.14(g) ).

37 CFR 1.14(g)(1) sets forth those conditions uponwhich copies of international application files maybe provided to the public. 37 CFR 1.14(g)(1)(i) and(ii) address the situation where the U.S. acted as thereceiving Office and the International SearchingAuthority, respectively. Under these provisions,copies of the Home and Search Copies of theinternational file will be provided upon request.However, the written opinion established bythe International Searching Authority will not beavailable until the expiration of 30 months from thepriority date. 37 CFR 1.14(g)(1)(iii) addresses thesituation in which the U.S. acted as the InternationalPreliminary Examining Authority (IPEA), the U.S.was elected, and the international preliminaryexamination report (IPER) has issued. PCT Rule94.2 provides that after issuance of the IPER, theIPEA shall provide copies of any documents in theexamination file to the elected Offices upon request.PCT Rule 94.3 permits the elected Offices to provideaccess to any documents in its files after internationalpublication has occurred. Therefore, the USPTOacting in its capacity as an elected Office, willprovide a copy of the examination file in aninternational application to a third party uponsubmission of a request complying with therequirements of 37 CFR 1.14(g)(1)(iii). Requestsfor copies of an international application file under37 CFR 1.14(g)(1) must be in the form of a writtenrequest sent to the International Patent LegalAdministration and must include a showing that theinternational application has been published and thatthe U.S. was designated. Such a showing shouldpreferably be in the form of the submission of a copyof the front page of the published internationalapplication. Additionally, requests for copies ofinternational application files must also beaccompanied by the appropriate fee (37 CFR1.19(b)).

37 CFR 1.14(g)(2) provides that copies of Englishlanguage translations of international applications,which were published in a non-English languageand which designated the U.S., and which have beensubmitted to the Office pursuant to 35 U.S.C.154(d)(4), will also be available to the public. The

100-24Rev. 07.2015, October 2015


USPTO will not provide general notification to thepublic of the filing of English language translationsunder 35 U.S.C. 154. Under 35 U.S.C. 154, it is theresponsibility of the applicant to notify any possibleinfringers for the purposes of obtaining provisionalrights.

37 CFR 1.14(g)(3) addresses access to the HomeCopy and the Search Copy of the internationalapplication. Access to the Examination Copy of theinternational application is prohibited under 37 CFR1.14(g)(5) as required by PCT Article 38.

111-114 [Reserved]

115 Review of Applications for NationalSecurity and Property Rights Issues[R-07.2015]

35 U.S.C. 181 Secrecy of certain inventions and withholdingof patent.

Whenever publication or disclosure by the publication of anapplication or by the grant of a patent on an invention in whichthe Government has a property interest might, in the opinion ofthe head of the interested Government agency, be detrimentalto the national security, the Commissioner of Patents upon beingso notified shall order that the invention be kept secret and shallwithhold the publication of an application or the grant of a patenttherefor under the conditions set forth hereinafter.

*****

All provisional applications filed under 35 U.S.C.111(b), nonprovisional applications filed under35 U.S.C. 111(a), international applications filedunder the PCT, and international design applicationsfiled under the Hague Agreement, in the U.S. Patentand Trademark Office (USPTO) are reviewed forthe purposes of issuance of a foreign filing licensepursuant to 35 U.S.C. 184. See also 37 CFR 5.1(b).These applications are screened upon receipt in theUSPTO for subject matter that, if disclosed, mightimpact the national security. Such applications arereferred to the appropriate agencies for considerationof restrictions on disclosure of the subject matter asprovided for in 35 U.S.C. 181.

If a defense agency concludes that disclosure of theinvention would be detrimental to the nationalsecurity, a secrecy order is recommended to the

Commissioner for Patents. The Commissioner thenissues a Secrecy Order and withholds the publicationof the application or the grant of a patent for suchperiod as the national interest requires.

For those applications in which the Government hasa property interest (including applications indicatingnational security classified subject matter),responsibility for notifying the Commissioner forPatents of the need for a Secrecy Order resides withthe agency having that interest. Applications that arenational security classified (see 37 CFR 1.9(i)) maybe so indicated by use of authorized national securitymarkings (e.g., “Confidential,” “Secret,” or “TopSecret”). National security classified documents filedin the USPTO must be either hand-carried toLicensing and Review or mailed to the Office incompliance with 37 CFR 5.1(a) and Executive Order13526 of December 29, 2009. However, the Officewill accept such applications filed with the USPTOvia the Department of Defense Secret InternetProtocol Router Network (SIPRNET) and considerthem as filed via the USPTO’s electronic filingsystem for purposes of 37 CFR 1.16(t) and 37 CFR1.445(a)(ii). As set forth in 37 CFR 5.1(d), theapplicant in a national security classified patentapplication must obtain a secrecy order from theappropriate defense agency or provide authority tocancel the markings. A list of contacts at theappropriate defense agency can be obtained bycontacting Licensing and Review.

A second purpose for the screening of allapplications, with an exception for provisionalapplications, is to identify inventions in which DOEor NASA might have property rights. See 42 U.S.C.2182, 51 U.S.C. 20135, and MPEP § 150.

A third function of the screening procedure is toprocess foreign filing license petitions under 37 CFR5.12(a). See MPEP § 140.

Provisional applications filed in a foreign languageare also screened under these provisions. The Officewill make an attempt to determine the subject matterof the application, but the applicant may be requiredto provide at least an English language abstract ofthe information for screening purposes. It is stronglyrecommended that if the applicant is in possessionof an English language description of the technology,

Rev. 07.2015, October 2015100-25


it should be filed with the provisional application toprevent screening delays.

All applications are required to be cleared fromsecrecy review before forwarding to issue. If theL&R code on the general information display doesnot equal 1, then in an IFW application, a messageshould be sent to LREVINCOMINGDOCS.

The Patent Application Locating and Monitoring(PALM) System's general information displaydiscloses the current Licensing and Review statusas well as the historical status. The indicator “L&Rcode” displays the current status of the applicationwhile the indicators “Third Level Review” and“Secrecy Order” display the historical status of theapplication. An L&R code of “3” or a “Third LevelReview” of “Yes” indicates that application is/hasbeen considered for security screening.

An L&R code of “4” indicates that application iscurrently under Secrecy Order. In this case, theapplication has been converted to a paper applicationfile and there should be no images maintained in theImage File Wrapper system (IFW).

While the initial screening is performed only bydesignated personnel, all examiners have aresponsibility to be alert for obviously sensitivesubject matter either in the original disclosure orsubsequently introduced, for example, byamendment. If the examiner is aware of subjectmatter which should be subject to screening byappropriate office personnel, this should be broughtto the attention of Licensing and Review, to any ofthe supervisory patent examiners (SPEs) ofTechnology Center Working Group 3640.

116-119 [Reserved]

120 Secrecy Orders [R-07.2015]

37 CFR 5.1 Correspondence.

(a) All correspondence in connection with this part,including petitions, should be addressed to: Mail Stop L&R,Commissioner for Patents, P.O. Box 1450, Alexandria, Virginia22313-1450.

(b) Definitions.

(1) Application as used in this part includes provisionalapplications (§ 1.9(a)(2) of this chapter), nonprovisional

applications (§ 1.9(a)(3)), international applications (§ 1.9(b)),or international design applications (§ 1.9(n)).

(2) Foreign application as used in this part includes,for filing in a foreign country, foreign patent office, foreignpatent agency, or international agency (other than the UnitedStates Patent and Trademark Office acting as a Receiving Officefor international applications (35 U.S.C. 361, § 1.412) or as anoffice of indirect filing for international design applications (35U.S.C. 382, § 1.1002)) any of the following: An application forpatent, international application, international design application,or application for the registration of a utility model, industrialdesign, or model.

(c) Patent applications and documents relating thereto thatare national security classified (see § 1.9(i) of this chapter) andcontain authorized national security markings (e.g.,“Confidential,” “Secret” or “Top Secret”) are accepted by theOffice. National security classified documents filed in the Officemust be either hand-carried to Licensing and Review or mailedto the Office in compliance with paragraph (a) of this section.

(d) The applicant in a national security classified patentapplication must obtain a secrecy order pursuant to § 5.2(a). Ifa national security classified patent application is filed withouta notification pursuant to § 5.2(a), the Office will set a timeperiod within which either the application must be declassified,or the application must be placed under a secrecy order pursuantto § 5.2(a), or the applicant must submit evidence of a goodfaith effort to obtain a secrecy order pursuant to § 5.2(a) fromthe relevant department or agency in order to preventabandonment of the application. If evidence of a good faitheffort to obtain a secrecy order pursuant to § 5.2(a) from therelevant department or agency is submitted by the applicantwithin the time period set by the Office, but the application hasnot been declassified or placed under a secrecy order pursuantto § 5.2(a), the Office will again set a time period within whicheither the application must be declassified, or the applicationmust be placed under a secrecy order pursuant to § 5.2(a), orthe applicant must submit evidence of a good faith effort toagain obtain a secrecy order pursuant to § 5.2(a) from therelevant department or agency in order to prevent abandonmentof the application.

(e) An application will not be published under § 1.211 ofthis chapter or allowed under § 1.311 of this chapter ifpublication or disclosure of the application would be detrimentalto national security. An application under national securityreview will not be published at least until six months from itsfiling date or three months from the date the application wasreferred to a defense agency, whichever is later. A nationalsecurity classified patent application will not be published under§ 1.211 of this chapter or allowed under § 1.311 of this chapteruntil the application is declassified and any secrecy order under§ 5.2(a) has been rescinded.

(f) Applications on inventions made outside the UnitedStates and on inventions in which a U.S. Government defenseagency has a property interest will not be made available todefense agencies.

37 CFR 5.2 Secrecy order.

(a) When notified by the chief officer of a defense agencythat publication or disclosure of the invention by the granting

100-26Rev. 07.2015, October 2015

MANUAL OF PATENT EXAMINING PROCEDURE§ 116-119

of a patent would be detrimental to the national security, anorder that the invention be kept secret will be issued by theCommissioner for Patents.

(b) Any request for compensation as provided in 35 U.S.C.183 must not be made to the Patent and Trademark Office, butdirectly to the department or agency which caused the secrecyorder to be issued.

(c) An application disclosing any significant part of thesubject matter of an application under a secrecy order pursuantto paragraph (a) of this section also falls within the scope ofsuch secrecy order. Any such application that is pending beforethe Office must be promptly brought to the attention of Licensingand Review, unless such application is itself under a secrecyorder pursuant to paragraph (a) of this section. Any subsequentlyfiled application containing any significant part of the subjectmatter of an application under a secrecy order pursuant toparagraph (a) of this section must either be hand-carried toLicensing and Review or mailed to the Office in compliancewith § 5.1(a).

37 CFR 5.3 Prosecution of application under secrecy orders;withholding patent.

Unless specifically ordered otherwise, action on the applicationby the Office and prosecution by the applicant will proceedduring the time an application is under secrecy order to the pointindicated in this section:

(a) National applications under secrecy order which cometo a final rejection must be appealed or otherwise prosecuted toavoid abandonment. Appeals in such cases must be completedby the applicant but unless otherwise specifically ordered bythe Commissioner for Patents will not be set for hearing untilthe secrecy order is removed.

(b) An interference or derivation will not be institutedinvolving a national application under secrecy order. Anapplicant whose application is under secrecy order may suggestan interference (§ 41.202(a) of this title), but the Office will notact on the request while the application remains under a secrecyorder.

(c) When the national application is found to be in conditionfor allowance except for the secrecy order the applicant and theagency which caused the secrecy order to be issued will benotified. This notice (which is not a notice of allowance under§ 1.311 of this chapter) does not require reply by the applicantand places the national application in a condition of suspensionuntil the secrecy order is removed. When the secrecy order isremoved the Patent and Trademark Office will issue a notice ofallowance under § 1.311 of this chapter, or take such other actionas may then be warranted.

(d) International applications and international designapplications under secrecy order will not be mailed, delivered,or otherwise transmitted to the international authorities or theapplicant. International applications under secrecy order willbe processed up to the point where, if it were not for the secrecyorder, record and search copies would be transmitted to theinternational authorities or the applicant.

37 CFR 5.4 Petition for rescission of secrecy order.

(a) A petition for rescission or removal of a secrecy ordermay be filed by, or on behalf of, any principal affected thereby.Such petition may be in letter form, and it must be in duplicate.

(b) The petition must recite any and all facts that purportto render the order ineffectual or futile if this is the basis of thepetition. When prior publications or patents are alleged thepetition must give complete data as to such publications orpatents and should be accompanied by copies thereof.

(c) The petition must identify any contract between theGovernment and any of the principals under which the subjectmatter of the application or any significant part thereof wasdeveloped or to which the subject matter is otherwise related.If there is no such contract, the petition must so state.

(d) Appeal to the Secretary of Commerce, as provided by35 U.S.C. 181, from a secrecy order cannot be taken until aftera petition for rescission of the secrecy order has been made anddenied. Appeal must be taken within sixty days from the dateof the denial, and the party appealing, as well as the departmentor agency which caused the order to be issued, will be notifiedof the time and place of hearing.

37 CFR 5.5 Permit to disclose or modification of secrecyorder.

(a) Consent to disclosure, or to the filing of an applicationabroad, as provided in 35 U.S.C. 182, shall be made by a“permit” or “modification” of the secrecy order.

(b) Petitions for a permit or modification must fully recitethe reason or purpose for the proposed disclosure. Where anyproposed disclosee is known to be cleared by a defense agencyto receive classified information, adequate explanation of suchclearance should be made in the petition including the name ofthe agency or department granting the clearance and the dateand degree thereof. The petition must be filed in duplicate.

(c) In a petition for modification of a secrecy order to permitfiling abroad, all countries in which it is proposed to file mustbe made known, as well as all attorneys, agents and others towhom the material will be consigned prior to being lodged inthe foreign patent office. The petition should include a statementvouching for the loyalty and integrity of the proposed discloseesand where their clearance status in this or the foreign countryis known all details should be given.

(d) Consent to the disclosure of subject matter from oneapplication under secrecy order may be deemed to be consentto the disclosure of common subject matter in other applicationsunder secrecy order so long as not taken out of context in amanner disclosing material beyond the modification granted inthe first application.

(e) Organizations requiring consent for disclosure ofapplications under secrecy order to persons or organizations inconnection with repeated routine operation may petition forsuch consent in the form of a general permit. To be successfulsuch petitions must ordinarily recite the security clearance statusof the disclosees as sufficient for the highest classification ofmaterial that may be involved.

Rev. 07.2015, October 2015100-27


I. SECRECY ORDER TYPES

Three types of Secrecy Orders, each of a differentscope, are issued as follows:

(A) Secrecy Order and Permit for Foreign Filingin Certain Countries (Type I secrecy order)— to beused for those patent applications that disclosecritical technology with military or space applicationin accordance with DoD Directive 5230.25“Withholding of Unclassified Technical Data FromPublic Disclosure,” based on 10 U.S.C. 130“Authority to Withhold From Public DisclosureCertain Technical Data.”

(B) Secrecy Order and Permit for DisclosingClassified Information (Type II secrecy order)— tobe used for those patent applications which containdata that is properly classified or classifiable undera security guideline where the patent applicationowner has a current DoD Security Agreement, DDForm 441. If the application is classifiable, thissecrecy order allows disclosure of the technicalinformation as if it were classified as prescribed inthe National Industrial Security Program OperatingManual (NISPOM).

(C) General Secrecy Order (Type III secrecyorder)— to be used for those patent applications thatcontain data deemed detrimental to national securityif published or disclosed, including that data properlyclassifiable under a security guideline where thepatent application owner does not have a DoDSecurity Agreement. The order prevents disclosureof the subject matter to anyone without an expresswritten consent from the Commissioner for Patents.However, quite often this type of secrecy orderincludes a permit “Permit A” which relaxes thedisclosure restrictions as set forth in the permit.

The Type I Secrecy Order is intended to permit thewidest utilization of the technical data in the patentapplication while still controlling any publication ordisclosure which would result in an unlawfulexportation. This type of Secrecy Order alsoidentifies the countries where corresponding patentapplications may be filed. Countries with which theUnited States has reciprocal security agreements are:Australia, Belgium, Canada, Denmark, France,Germany, Greece, Italy, Japan, Luxembourg,Netherlands, Norway, Portugal, Republic of Korea,

Spain, Sweden, Turkey and the United Kingdom.Please note that applications subject to a secrecyorder cannot be filed directly with the EuropeanPatent Office since no reciprocal security agreementwith this organization exists. Applications must befiled in the individual EPO member countriesidentified above. Applicant must arrange filing ofsuch subject matter through the agency sponsoringthe secrecy order.

The intent of the Type II Secrecy Order is totreat classified and classifiable technical datapresented as a patent application in the same manneras any other classified material. Accordingly, thisSecrecy Order will include a notification of theclassification level of the technical data in theapplication.

The Type III Secrecy Order is used where the othertypes of Orders do not apply, including Orders issuedby direction of agencies other than the Departmentof Defense.

A Secrecy Order should not be construed in any wayto mean that the Government has adopted orcontemplates adoption of the alleged inventiondisclosed in an application; nor is it any indicationof the value of such invention.

II. RELATED SUBJECT MATTER

The Secrecy Orders apply to the subject matter ofthe invention, not just to the patent application itself.Thus, the Secrecy Order restricts disclosure orpublication of the invention in any form.Furthermore, other patent applications already filedor later filed which contain any significant part ofthe subject matter of the application also fall withinthe scope of the Order and must be brought to theattention of Licensing & Review if such applicationsare not already under Secrecy Order by theCommissioner.

The effects of a Secrecy Order are detailed in thenotifying letter and include restrictions on disclosureof the invention and delay of any patent grant untilthe Order is rescinded.

100-28Rev. 07.2015, October 2015


III. CORRESPONDENCE

When the Secrecy Order issues, the law specifiesthat the subject matter or any material informationrelevant to the application, including unpublisheddetails of the invention, shall not be published ordisclosed to any person not aware of the inventionprior to the date of the Order, including anyemployee of the principals except as permitted bythe Secrecy Order. The law also requires that allinformation material to the subject matter of theapplication be kept in confidence, unless writtenpermission to disclose is first obtained from theCommissioner for Patents except as provided by theSecrecy Order. Therefore, all correspondence to befiled in an application which is subject to a secrecyorder and which is directly related to the subjectmatter covered by the Secrecy Order must betransmitted to the Office in a manner which wouldpreclude disclosure to unauthorized individuals andaddressed as set forth in 37 CFR 5.1(a). Use offacsimile transmission is not permitted. 37 CFR1.6(d)(6).

Subject matter under Secrecy Order must besafeguarded under conditions that will provideadequate protection and prevent access byunauthorized persons.

When applicants desire to change the Power ofAttorney in an application under Secrecy Order,applicant is required to provide a statement that thenew attorney(s) has been apprised of the secrecyorder.

In the case of applications bearing National SecurityClassification markings pursuant to an ExecutiveOrder, e.g., “Confidential” or “Secret,” applicantsmust provide a DoD cage code as evidence of theability to accept and store classified information.Applicants no longer need to provide individualpersonal information to ensure a proper securityclearance. Personnel controlling the clearedcorrespondence address bear the burden of ensuringthat individuals obtaining classified information fromthe correspondence address follow the properprocedures for handling classified information.

IV. INTERNATIONAL APPLICATIONS (PCT) ANDINTERNATIONAL DESIGN APPLICATIONS

If the Secrecy Order is applied to an internationalapplication or an international design application,the application will not be mailed, delivered, orotherwise transmitted to the international authoritiesor the applicant as long as the Secrecy Order remainsin effect.

An international application will be consideredwithdrawn (abandoned) if the Secrecy Order remainsin effect at the end of the time limit under PCT Rule22.3 because the Record Copy of the internationalapplication was not received in time by theInternational Bureau. 37 CFR 5.3(d), PCT Article12(3), and PCT Rule 22.3. If the United States ofAmerica has been designated, however, it is possibleto save the U.S. filing date, by fulfilling therequirements of 35 U.S.C. 371(c) prior to thewithdrawal.

V. CHANGES IN SECRECY ORDERS

Applicants may petition for rescission ormodification of the Secrecy Order. For example, ifthe applicant believes that certain existing facts orcircumstances would render the Secrecy Orderineffectual, he or she may informally contact thesponsoring agency to discuss these facts or formallypetition the Commissioner for Patents to rescind theOrder. Rescission of a Secrecy Order may also beeffected in some circumstances by expunging thesensitive subject matter from the disclosure, providedthe sensitive subject matter is not necessary for anenabling disclosure under 35 U.S.C. 112. See MPEP§ 724.05. The defense agency identified with theSecrecy Order as sponsoring the Order should becontacted directly for assistance in determining whatsubject matter in the application is sensitive, andwhether the agency would agree to rescind the Orderupon expunging this subject matter. The applicantmay also petition the Commissioner for Patents fora permit to disclose the invention to another or tomodify the Secrecy Order stating fully the reason orpurpose for disclosure or modification. An exampleof such a situation would be a request to file theapplication in a foreign country. The requirementsfor petitions are described in 37 CFR 5.4 and 5.5.The law also provides that if an appeal is necessary,

Rev. 07.2015, October 2015100-29


it may be taken to the Secretary of Commerce. Anypetition or appeal should be addressed to the MailStop L&R, Commissioner for Patents, P.O. Box1450, Alexandria, Virginia, 22313-1450.

VI. IMPROPER OR INADVERTENT DISCLOSURE

If, prior to or after the issuance of the Secrecy Order,any significant part of the subject matter or materialinformation relevant to the application has been oris revealed to any U.S. citizen in the United States,the principals must promptly inform such person ofthe Secrecy Order and the penalties for improperdisclosure. If such part of the subject matter was oris disclosed to any person in a foreign country orforeign national in the U.S., the principals must notinform such person of the Secrecy Order, but insteadmust promptly furnish to Mail Stop L&R,Commissioner for Patents, P.O. Box 1450,Alexandria, Virginia, 22313-1450 the followinginformation to the extent not already furnished: dateof disclosure; name and address of the disclosee;identification of such subject matter; and anyauthorization by a U.S. government agency to exportsuch subject matter. If the subject matter is includedin any foreign patent application or patent, thisshould be identified.

VII. EXPIRATION

Under the provision of 35 U.S.C. 181, a SecrecyOrder remains in effect for a period of 1 year fromits date of issuance. A Secrecy Order may berenewed for additional periods of not more than 1year upon notice by a government agency that thenational interest so requires. The applicant is notifiedof any such renewal.

The expiration of or failure to renew a Secrecy Orderdoes not lessen in any way the responsibility of theprincipals for the security of the subject matter if itis subject to the provisions of Exec. Order No. 12958or the Atomic Energy Act of 1954, as amended,42 U.S.C. 141 et. seq. and 42 U.S.C. 2181 et. seq.or other applicable law unless the principals havebeen expressly notified that the subject patentapplication has been declassified by the properauthorities and the security markings have beenauthorized to be canceled or removed.

121 Handling of Applications under SecrecyOrder and/or Bearing National SecurityMarkings [R-08.2012]

Applications subject to Secrecy Order will be deletedfrom any image file system within the USPTO,converted to paper and held with Licensing andReview. The application will be transferred to anexaminer designated by Licensing and Review forexamination. Under the current Executive Order forClassified National Security Information, standardsare prescribed for the marking, handling, and careof official information which requires safeguardingin the interest of security.

Papers marked as prescribed in the Executive Ordersand showing that such marking is applied by, or atthe direction of, a government agency, are acceptedin patent applications. All applications or papers,including non-patent literature, in the U.S. Patentand Trademark Office bearing words such as“Secret,” “Confidential,” “ITAR” or similar mustbe promptly referred to Technology Center (TC)Working Group 3640 for clarification or securitytreatment. Under no circumstances can any suchapplication, drawing, exhibit, or other paper beplaced in public records, such as the patented files,until all security markings have been considered anddeclassified or otherwise explained. For applicationsfiled with the Office bearing what appears to beNational Security Markings, the applicant will be sonotified by Licensing and Review and asked toexplain the markings, remove such markings ifimproper, or obtain a Secrecy Order, if necessary.If markings are found improper and removed, theapplication may be referred to a defense agency ifdeemed necessary for review under the secondparagraph of 35 U.S.C. 181. Any application fileddirectly with Licensing and Review, not bearingproper security markings or Secrecy Order will betransmitted to scanning for incorporation as anelectronic file in IFW and treated as a normalapplication.

Authorized security markings may be placed on thepatent application drawings when filed provided thatsuch markings are outside the illustrations and thatthey are removed when the material is declassified.37 CFR 1.84(v).

100-30Rev. 07.2015, October 2015


122-129 [Reserved]

130 Examination of Secrecy Order Cases[R-11.2013]

All applications in which a Secrecy Order has beenimposed are examined in a secure location byexaminers possessing national security clearancesunder the control of Licensing and Review. If theOrder is imposed subsequent to the docketing of anapplication in another TC, the application will betransferred to an examiner designated by Licensingand Review.

Secrecy Order cases are examined for patentabilityas in other cases, but will not be passed to issue; norwill an interference or derivation be instituted whereone or more of the conflicting cases is classified orunder Secrecy Order. See 37 CFR 5.3 and MPEP §2306.

In case of a final rejection, while such action mustbe properly replied to, and an appeal, if filed, mustbe completed by the applicant to preventabandonment, such appeal will not be set for hearingby the Patent Trial and Appeal Board until theSecrecy Order is removed, unless specificallyordered by the Commissioner for Patents.

When a Secrecy Order case is in condition forallowance, a notice of allowability (Form D-10) isissued, thus closing the prosecution. See 37 CFR5.3(c). Any amendments received thereafter are notentered or responded to until such time as theSecrecy Order is rescinded. At such time,amendments which are free from objection will beentered; otherwise they are denied entry.

Due to the additional administrative burdensassociated with handling papers in Secrecy Ordercases, the full statutory period for reply willordinarily be set for all Office actions issued on suchcases.

Sometimes applications bearing national securitymarkings but no Secrecy Order come up forexamination. In this case, the examiner shouldrequire the applicant to seek imposition of a Secrecy

Order or authority to cancel the markings. Thisshould preferably be done with the first action and,in any event, prior to final disposition of theapplication. Pursuant to 37 CFR 5.1(d), if no SecrecyOrder has issued in a national security classifiedpatent application, the Office will set a time periodwithin which the applicant must take one of thefollowing three actions in order to preventabandonment of the application:

(A) obtain a Secrecy Order;

(B) declassify the application; or

(C) submit evidence of a good faith effort toobtain a Secrecy Order pursuant to 37 CFR 5.2(a).

Pursuant to 37 CFR 5.1(e), a national securityclassified patent application will not be allowed untilthe application is declassified and any Secrecy Orderpursuant to 37 CFR 5.2(a) has been rescinded.

131-139 [Reserved]

140 Foreign Filing Licenses [R-07.2015]

35 U.S.C. 184 Filing of application in foreign country.

(a) FILING IN FOREIGN COUNTRY.—Except whenauthorized by a license obtained from the Commissioner ofPatents a person shall not file or cause or authorize to be filedin any foreign country prior to six months after filing in theUnited States an application for patent or for the registration ofa utility model, industrial design, or model in respect of aninvention made in this country. A license shall not be grantedwith respect to an invention subject to an order issued by theCommissioner of Patents pursuant to section 181 without theconcurrence of the head of the departments and the chief officersof the agencies who caused the order to be issued. The licensemay be granted retroactively where an application has been filedabroad through error and the application does not disclose aninvention within the scope of section 181.

(b) APPLICATION.—The term “application” when usedin this chapter includes applications and any modifications,amendments, or supplements thereto, or divisions thereof.

(c) SUBSEQUENT MODIFICATIONS, AMENDMENTS,AND SUPPLEMENTS.—The scope of a license shall permitsubsequent modifications, amendments, and supplementscontaining additional subject matter if the application uponwhich the request for the license is based is not, or was not,required to be made available for inspection under section 181and if such modifications, amendments, and supplements donot change the general nature of the invention in a manner whichwould require such application to be made available forinspection under such section 181. In any case in which a licenseis not, or was not, required in order to file an application in anyforeign country, such subsequent modifications, amendments,

Rev. 07.2015, October 2015100-31


and supplements may be made, without a license, to theapplication filed in the foreign country if the United Statesapplication was not required to be made available for inspectionunder section 181 and if such modifications, amendments, andsupplements do not, or did not, change the general nature of theinvention in a manner which would require the United Statesapplication to have been made available for inspection undersuch section 181.

35 U.S.C. 185 Patent barred for filing without license.

Notwithstanding any other provisions of law any person, andhis successors, assigns, or legal representatives, shall not receivea United States patent for an invention if that person, or hissuccessors, assigns, or legal representatives shall, withoutprocuring the license prescribed in section 184, have made, orconsented to or assisted another’s making, application in aforeign country for a patent or for the registration of a utilitymodel, industrial design, or model in respect of the invention.A United States patent issued to such person, his successors,assigns, or legal representatives shall be invalid, unless thefailure to procure such license was through error, and the patentdoes not disclose subject matter within the scope of section 181.

35 U.S.C. 186 Penalty.

Whoever, during the period or periods of time an invention hasbeen ordered to be kept secret and the grant of a patent thereonwithheld pursuant to section 181, shall, with knowledge of suchorder and without due authorization, willfully publish or discloseor authorize or cause to be published or disclosed the invention,or material information with respect thereto, or whoeverwillfully, in violation of the provisions of section 184, shall fileor cause or authorize to be filed in any foreign country anapplication for patent or for the registration of a utility model,industrial design, or model in respect of any invention made inthe United States, shall, upon conviction, be fined not more than$10,000 or imprisoned for not more than two years, or both.

35 U.S.C. 187 Nonapplicability to certain persons

The prohibitions and penalties of this chapter shall not apply toany officer or agent of the United States acting within the scopeof his authority, nor to any person acting upon his writteninstructions or permission.

35 U.S.C. 188 Rules and regulations, delegation of power.

The Atomic Energy Commission, the Secretary of a defensedepartment, the chief officer of any department or agency ofthe Government designated by the President as a defense agencyof the United States, and the Secretary of Commerce, mayseparately issue rules and regulations to enable the respectivedepartment or agency to carry out the provisions of this chapter,and may delegate any power conferred by this chapter.

37 CFR 5.11 License for filing in, or exporting to, a foreigncountry an application on an invention made in the UnitedStates or technical data relating thereto.

(a) A license from the Commissioner for Patents under 35U.S.C. 184 is required before filing any application for patentincluding any modifications, amendments, or supplementsthereto or divisions thereof or for the registration of a utilitymodel, industrial design, or model, in a foreign country, foreignpatent office, foreign patent agency, or any international agency(other than the United States Patent and Trademark Office actingas a Receiving Office for international applications (35 U.S.C.361 , § 1.412 ) or as an office of indirect filing for internationaldesign applications (35 U.S.C. 382 , §1.1002 )), if the inventionwas made in the United States, and:

(1) An application on the invention has been filed inthe United States less than six months prior to the date on whichthe application is to be filed, or

(2) No application on the invention has been filed inthe United States.

(b) The license from the Commissioner for Patents referredto in paragraph (a) of this section would also authorize the exportof technical data abroad for purposes relating to the preparation,filing or possible filing and prosecution of a foreign applicationwithout separately complying with the regulations contained in22 CFR parts 120 through 130 (International Traffic in ArmsRegulations of the Department of State), 15 CFR parts 730through 774 (Export Administration Regulations of the Bureauof Industry and Security, Department of Commerce) and 10CFR part 810 (Assistance to Foreign Atomic Energy ActivitiesRegulations of the Department of Energy).

(c) Where technical data in the form of a patent application,or in any form, are being exported for purposes related to thepreparation, filing or possible filing and prosecution of a foreignapplication, without the license from the Commissioner forPatents referred to in paragraphs (a) or (b) of this section, or onan invention not made in the United States, the export regulationscontained in 22 CFR parts 120 through 130 (International Trafficin Arms Regulations of the Department of State), 15 CFR parts730 through 774 (Export Administration Regulations of theBureau of Industry and Security, Department of Commerce)and 10 CFR part 810 (Assistance to Foreign Atomic EnergyActivities Regulations of the Department of Energy) must becomplied with unless a license is not required because a UnitedStates application was on file at the time of export for at leastsix months without a secrecy order under § 5.2 being placedthereon. The term “exported” means export as it is defined in22 CFR part 120, 15 CFR part 734 and activities covered by 10CFR part 810.

(d) If a secrecy order has been issued under § 5.2, anapplication cannot be exported to, or filed in, a foreign country(including an international agency in a foreign country), exceptin accordance with § 5.5.

(e) No license pursuant to paragraph (a) of this section isrequired:

(1) If the invention was not made in the United States,or

100-32Rev. 07.2015, October 2015


(2) If the corresponding United States application isnot subject to a secrecy order under § 5.2, and was filed at leastsix months prior to the date on which the application is filed ina foreign country, or

(3) For subsequent modifications, amendments andsupplements containing additional subject matter to, or divisionsof, a foreign patent application if:

(i) A license is not, or was not, required underparagraph (e)(2) of this section for the foreign application;

(ii) The corresponding United States applicationwas not required to be made available for inspection under35 U.S.C. 181; and

(iii) Such modifications, amendments, andsupplements do not, or did not, change the general nature of theinvention in a manner which would require any correspondingUnited States application to be or have been available forinspection under 35 U.S.C. 181.

(f) A license pursuant to paragraph (a) of this section canbe revoked at any time upon written notification by the UnitedStates Patent and Trademark Office. An authorization to file aforeign patent application resulting from the passage of sixmonths from the date of filing of a United States patentapplication may be revoked by the imposition of a secrecy order.

37 CFR 5.12 Petition for license.

(a) Filing of an application on an invention made in theUnited States will be considered to include a petition for licenseunder 35 U.S.C. 184 for the subject matter of the application.The filing receipt or other official notice will indicate if a licenseis granted. If the initial automatic petition is not granted, asubsequent petition may be filed under paragraph (b) of thissection.

(b) A petition for license must include the fee set forth in§ 1.17(g) of this chapter, the petitioner’s address, and fullinstructions for delivery of the requested license when it is tobe delivered to other than the petitioner. The petition should bepresented in letter form.

37 CFR 5.13 Petition for license; no correspondingapplication.

If no corresponding national, international design, orinternational application has been filed in the United States, thepetition for license under § 5.12(b) must also be accompaniedby a legible copy of the material upon which a license is desired.This copy will be retained as a measure of the license granted.

37 CFR 5.14 Petition for license; corresponding U.S.application.

(a) When there is a corresponding United States applicationon file, a petition for license under § 5.12(b) must also identifythis application by application number, filing date, inventor,and title, but a copy of the material upon which the license isdesired is not required. The subject matter licensed will bemeasured by the disclosure of the United States application.

(b) Two or more United States applications should not bereferred to in the same petition for license unless they are to becombined in the foreign or international application, in whichevent the petition should so state and the identification of eachUnited States application should be in separate paragraphs.

(c) Where the application to be filed or exported abroadcontains matter not disclosed in the United States applicationor applications, including the case where the combining of twoor more United States applications introduces subject matternot disclosed in any of them, a copy of the application as it isto be filed or exported abroad, must be furnished with thepetition. If, however, all new matter in the application to be filedor exported is readily identifiable, the new matter may besubmitted in detail and the remainder by reference to thepertinent United States application or applications.

37 CFR 5.15 Scope of license.

(a) Applications or other materials reviewed pursuant to§§ 5.12 through 5.14, which were not required to be madeavailable for inspection by defense agencies under 35 U.S.C.181, will be eligible for a license of the scope provided in thisparagraph. This license permits subsequent modifications,amendments, and supplements containing additional subjectmatter to, or divisions of, a foreign patent application, if suchchanges to the application do not alter the general nature of theinvention in a manner which would require the United Statesapplication to have been made available for inspection under35 U.S.C. 181. Grant of this license authorizes the export andfiling of an application in a foreign country or to any foreignpatent agency or international patent agency when the subjectmatter of the foreign application corresponds to that of thedomestic application. This license includes authority:

(1) To export and file all duplicate and formalapplication papers in foreign countries or with internationalagencies;

(2) To make amendments, modifications, andsupplements, including divisions, changes or supporting matterconsisting of the illustration, exemplification, comparison, orexplanation of subject matter disclosed in the application; and

(3) To take any action in the prosecution of the foreignapplication provided that the adding of subject matter or takingof any action under paragraphs (a)(1) or (2) of this section doesnot change the general nature of the invention disclosed in theapplication in a manner that would require such application tohave been made available for inspection under 35 U.S.C. 181by including technical data pertaining to:

(i) Defense services or articles designated in theUnited States Munitions List applicable at the time of foreignfiling, the unlicensed exportation of which is prohibited pursuantto the Arms Export Control Act, as amended, and 22 CFR parts120 through 130; or

(ii) Restricted Data, sensitive nuclear technologyor technology useful in the production or utilization ofspecial nuclear material or atomic energy, dissemination ofwhich is subject to restrictions of the Atomic Energy Act of1954, as amended, and the Nuclear Non-Proliferation Act of1978, as implemented by the regulations for Assistance toForeign Atomic Energy Activities, 10 CFR part 810, in effectat the time of foreign filing.

Rev. 07.2015, October 2015100-33


(b) Applications or other materials which were required tobe made available for inspection under 35 U.S.C. 181 will beeligible for a license of the scope provided in this paragraph.Grant of this license authorizes the export and filing of anapplication in a foreign country or to any foreign patent agencyor international patent agency. Further, this license includesauthority to export and file all duplicate and formal papers inforeign countries or with foreign and international patentagencies and to make amendments, modifications, andsupplements to, file divisions of, and take any action in theprosecution of the foreign application, provided subject matteradditional to that covered by the license is not involved.

(c) A license granted under § 5.12(b) pursuant to § 5.13 or§ 5.14 shall have the scope indicated in paragraph (a) of thissection, if it is so specified in the license. A petition,accompanied by the required fee (§ 1.17(g) of this chapter), mayalso be filed to change a license having the scope indicated inparagraph (b) of this section to a license having the scopeindicated in paragraph (a) of this section. No such petition willbe granted if the copy of the material filed pursuant to § 5.13or any corresponding United States application was required tobe made available for inspection under 35 U.S.C. 181. Thechange in the scope of a license will be effective as of the dateof the grant of the petition.

(d) In those cases in which no license is required to file orexport the foreign application, no license is required to filepapers in connection with the prosecution of the foreignapplication not involving the disclosure of additional subjectmatter.

(e) Any paper filed abroad or transmitted to an internationalpatent agency following the filing of a foreign application thatchanges the general nature of the subject matter disclosed at thetime of filing in a manner which would require such applicationto have been made available for inspection under 35 U.S.C. 181or which involves the disclosure of subject matter listed inparagraphs (a)(3)(i) or (ii) of this section must be separatelylicensed in the same manner as a foreign application. Further,if no license has been granted under § 5.12(a) on filing thecorresponding United States application, any paper filed abroador with an international patent agency that involves thedisclosure of additional subject matter must be licensed in thesame manner as a foreign application.

(f) Licenses separately granted in connection with two ormore United States applications may be exercised by combiningor dividing the disclosures, as desired, provided:

(1) Subject matter which changes the general natureof the subject matter disclosed at the time of filing or whichinvolves subject matter listed in paragraphs (a)(3) (i) or (ii) ofthis section is not introduced and,

(2) In the case where at least one of the licenses wasobtained under § 5.12(b), additional subject matter is notintroduced.

(g) A license does not apply to acts done before the licensewas granted. See § 5.25 for petitions for retroactive licenses.

37 CFR 5.18 Arms, ammunition, and implements of war.

(a) The exportation of technical data relating to arms,ammunition, and implements of war generally is subject to the

International Traffic in Arms Regulations of the Department ofState (22 CFR parts 120 through 130); the articles designatedas arms, ammunitions, and implements of war are enumeratedin the U.S. Munitions List (22 CFR part 121). However, if apatent applicant complies with regulations issued by theCommissioner for Patents under 35 U.S.C. 184, no separateapproval from the Department of State is required unless theapplicant seeks to export technical data exceeding that used tosupport a patent application in a foreign country. This exemptionfrom Department of State regulations is applicable regardlessof whether a license from the Commissioner for Patents isrequired by the provisions of §§ 5.11 and 5.12 (22 CFR part125).

(b) When a patent application containing subject matter onthe Munitions List (22 CFR part 121) is subject to a secrecyorder under § 5.2 and a petition is made under § 5.5 for amodification of the secrecy order to permit filing abroad, aseparate request to the Department of State for authority toexport classified information is not required (22 CFR part 125).

37 CFR 5.19 Export of technical data.

(a) Under regulations (15 CFR 734.3(b)(1)(v)) establishedby the Department of Commerce, a license is not required inany case to file a patent application or part thereof in a foreigncountry if the foreign filing is in accordance with the regulations(§§ 5.11 through 5.25) of the U.S. Patent and Trademark Office.

(b) An export license is not required for data contained ina patent application prepared wholly from foreign-origintechnical data where such application is being sent to the foreigninventor to be executed and returned to the United States forsubsequent filing in the U.S. Patent and Trademark Office (15CFR 734.10(a)).

37 CFR 5.20 Export of technical data relating to sensitivenuclear technology.

Under regulations (10 CFR 810.7) established by the UnitedStates Department of Energy, an application filed in accordancewith the regulations (§§ 5.11 through 5.25) of the Patent andTrademark Office and eligible for foreign filing under 35 U.S.C.184, is considered to be information available to the public inpublished form and a generally authorized activity for thepurposes of the Department of Energy regulations.

37 CFR 5.25 Petition for retroactive license.

(a) A petition for retroactive license under 35 U.S.C. 184shall be presented in accordance with § 5.13 or § 5.14(a), andshall include:

(1) A listing of each of the foreign countries in whichthe unlicensed patent application material was filed,

(2) The dates on which the material was filed in eachcountry,

(3) A verified statement (oath or declaration)containing:

(i) An averment that the subject matter in questionwas not under a secrecy order at the time it was filed aboard[sic], and that it is not currently under a secrecy order,

100-34Rev. 07.2015, October 2015


(ii) A showing that the license has been diligentlysought after discovery of the proscribed foreign filing, and

(iii) An explanation of why the material was filedabroad through error without the required license under § 5.11first having been obtained, and

(4) The required fee (§ 1.17(g) of this chapter).

(b) The explanation in paragraph (a) of this section mustinclude a showing of facts rather than a mere allegation of actionthrough error. The showing of facts as to the nature of the errorshould include statements by those persons having personalknowledge of the acts regarding filing in a foreign country andshould be accompanied by copies of any necessary supportingdocuments such as letters of transmittal or instructions for filing.The acts which are alleged to constitute error should cover theperiod leading up to and including each of the proscribed foreignfilings.

(c) If a petition for a retroactive license is denied, a timeperiod of not less than thirty days shall be set, during which thepetition may be renewed. Failure to renew the petition withinthe set time period will result in a final denial of the petition. Afinal denial of a petition stands unless a petition is filed under§ 1.181 within two months of the date of the denial. If thepetition for a retroactive license is denied with respect to theinvention of a pending application and no petition under § 1.181has been filed, a final rejection of the application under 35U.S.C. 185 will be made.

In the interests of national security, the United Statesgovernment imposes restrictions on the export oftechnical information. These restrictions areadministered by the Departments of Commerce,State, and/or Energy depending on the subject matterinvolved. For the filing of patent applications andregistrations of industrial designs in foreigncountries, the authority for export control has beendelegated to the Commissioner for Patents (note thatthe term “Commissioner of Patents” is used inChapter 17 of title 35 of the U.S. Code, but“Commissioner for Patents” is used in most of theremainder of the statute and throughout title 37 ofthe Code of Federal Regulations; both titles areunderstood to represent the same individual). Notethat the export of subject matter abroad for purposesnot related to foreign filing of a patent applicationor a registration of an industrial design, such aspreparing an application in a foreign country forsubsequent filing in the USPTO is not covered byany license from the USPTO. Applicants are directedto the Bureau of Industry and Security at theDepartment of Commerce for the appropriateclearances.

There are two ways in which permission to file anapplication abroad may be obtained: either a petitionfor a foreign filing license may be granted (37 CFR5.12) or an applicant may wait 6 months after filingan application in the USPTO (35 U.S.C. 184) atwhich time a license on that subject matter is nolonger required as long as no Secrecy Order has beenimposed. 37 CFR 5.11(e)(2).

There are several means by which a foreign filinglicense may be issued. First, every U.S. originapplication filed in the USPTO is considered toinclude an implicit petition for a foreign filinglicense. The grant of a license is not immediate oreven ensured. If the application is not marked by thesecurity screeners, the petition is granted. The filingreceipt or other official notice will indicate if aforeign filing license is granted. The license becomeseffective on the date shown. Further, grant of thislicense is made of record in the application file. Thescope of this license is quite broad as set forth in 37CFR 5.15(a).

I. EXPEDITED FOREIGN FILING LICENSE

Explicit petitions for foreign filing licenses will alsobe accepted in accordance with 37 CFR 5.12(b).Such petitions may be hand carried to the Office,faxed to Licensing and Review, or submitted viaEFS-Web. See MPEP §§ 502, 502.01 and 502.05.Applicants may be interested in such petitions incases:

(A) in which the filing receipt license is notgranted;

(B) in which the filing receipt has not yet beenissued (37 CFR 5.14(a) or (b));

(C) in which there is no corresponding U.S.application (37 CFR 5.13);

(D) in which subject matter additional to thatalready licensed is sought to be licensed (37 CFR5.14(c) and 5.15(e)); or

(E) in which expedited handling is requested.

The scope of any license granted on these petitionsis indicated on the license.

Petitions under 37 CFR 5.14(a) or (b) as well as anylicense granted on the petition are made of record

Rev. 07.2015, October 2015100-35


in the application file. Petitions under 37 CFR5.14(c) are not ordinarily made of record in theapplication file.

Applicants granted a license under 37 CFR 5.12(b)having the relatively narrow scope indicated in37 CFR 5.15(b) may petition under 37 CFR 5.15(c)to convert the license to the broad scope of 37 CFR5.15(a). A fee is charged for such a petition. See 37CFR 1.17(g). If the petition is granted, the changein the scope of the license is effective as of that day.

Generally, a license will be granted, if there is nonational security concern, within 3 business daysfrom receipt of the expedited petition (filed under37 CFR 5.12(b)) in Licensing and Review.Applicants are strongly encouraged to hand deliveror fax the license request directly to Licensing andReview at 571-273-0185. Applicants should alsoprovide a contact number or fax number to whichthe license should be sent. Without this information,the license will be mailed to the requester, therebydelaying the receipt of the license.

II. RETROACTIVE LICENSES

A petition for a retroactive filing license may be filedunder 37 CFR 5.25 if an unlicensed foreign filinghas occurred through error. However, therequirements of 37 CFR 5.25 must be fulfilled inorder for such a petition to be granted. Note that forpetitions filed prior to September 16, 2012, thepetition must specify that the error occurred withoutdeceptive intent (see pre-AIA 37 CFR 5.25(a)(3)(iii)and (b)). Licenses under 37 CFR 5.25 are only maderetroactive with respect to specific acts of foreignfiling, and therefore the countries, the actual datesof filing and the establishing of the nature of theerror must be provided for each act of proscribedforeign filing for which a retroactive license issought. Also, the required verified statement mustbe in oath or declaration form.

Upon written notification from the USPTO, anyforeign filing license required by 37 CFR 5.11(a)may be revoked. Ordinarily, revocation indicatesthat additional review of the licensed subject matterrevealed the need for referral of the application tothe appropriate defense agencies. Revocation of afiling receipt license (37 CFR 5.12(a)) does not

necessarily mean that a petition under 37 CFR5.12(b) for a license of narrower scope will not begranted. The revocation becomes effective on thedate on which the notice is mailed. Foreign filings,which occurred prior to revocation, need not beabandoned or otherwise specially treated; however,additional filings without a license are not permittedunless 6 months have elapsed from the filing of anycorresponding U.S. application. Papers and otherdocuments needed in support of prosecution offoreign applications may be sent abroad if theycomply with any pertinent export regulations. Ofcourse, if and once a Secrecy Order is issued, therestrictions thereof must immediately be observed.

Only the imposition of a Secrecy Order will causerevocation of the authority which arises from 35U.S.C. 184 to file a foreign patent application 6months or later after the date of filing of acorresponding U.S. patent application.

The penalties for failing to obtain any necessarylicense to file a patent application abroad are setforth in 35 U.S.C. 182, 35 U.S.C. 185, and 35 U.S.C.186 and include loss of patenting rights in additionto possible fine or imprisonment. Petitions forretroactive foreign filing licenses are processed byLicensing and Review and decided by the Office ofPetitions. See MPEP § 1002.02(b). If applicant alsowishes an expedited license for future filings, aseparate expedited license request must be filed withLicensing and Review.

141-149 [Reserved]

150 Statements to DOE and NASA[R-11.2013]


(d) Applications reported to Department of Energy.Applications for patents which appear to disclose, purport todisclose or do disclose inventions or discoveries relating toatomic energy are reported to the Department of Energy, whichDepartment will be given access to the applications. Suchreporting does not constitute a determination that the subjectmatter of each application so reported is in fact useful or is aninvention or discovery, or that such application in fact disclosessubject matter in categories specified by 42 U.S.C. 2181(c) and(d).

*****

100-36Rev. 07.2015, October 2015

MANUAL OF PATENT EXAMINING PROCEDURE§ 141-149

Title 42 United States Code, Section 2182 reads inpart:

42 U.S.C. 2182 Inventions conceived during Commissioncontracts; ownership; waiver; hearings

*****

No patent for any invention or discovery, useful in theproduction or utilization of special nuclear material or atomicenergy, shall be issued unless the applicant files with theapplication, or within thirty days after request therefor by theUnder Secretary of Commerce for Intellectual Property andDirector of the United States Patent and Trademark Office(unless the Commission advises the Under Secretary ofCommerce for Intellectual Property and Director of the UnitedStates Patent and Trademark Office that its rights have beendetermined and that accordingly no statement is necessary) astatement under oath setting forth the full facts surrounding themaking or conception of the invention or discovery describedin the application and whether the invention or discovery wasmade or conceived in the course of or under any contract,subcontract, or arrangement entered into with or for the benefitof the Commission, regardless of whether the contract,subcontract, or arrangement involved the expenditure of fundsby the Commission. The Under Secretary of Commerce forIntellectual Property and Director of the United States Patentand Trademark Office shall as soon as the application isotherwise in condition for allowance forward copies of theapplication and the statement to the Commission.

*****

Similarly, Title 51 United States Code, section 20135provides in part:

51 U.S.C. 20135 Property rights in inventions

*****

(d) Patent Application. - No patent may be issued to anyapplicant other than the Administrator for any invention whichappears to the Under Secretary of Commerce for IntellectualProperty and Director of the United States Patent and TrademarkOffice (hereafter in this section referred to as the "Director") tohave significant utility in the conduct of aeronautical and spaceactivities unless the applicant files with the Director, with theapplication or within 30 days after request therefor by theDirector, a written statement executed under oath setting forththe full facts concerning the circumstances under which theinvention was made and stating the relationship (if any) of theinvention to the performance of any work under any contractof the Administration. Copies of each such statement and theapplication to which it relates shall be transmitted forthwith bythe Director to the Administrator.

*****

Property rights statements to DOE or NASA maybe filed at any time but should be updated ifnecessary to accurately reflect property rights at thetime the application is allowed.

Shortly after filing, an informal request for a propertyrights statement will be mailed to those applicantswhose nonprovisional applications have been markedby the USPTO security screeners as being of interestto DOE or NASA. Provisional applications are notsubject to DOE or NASA property rights review.While no formal time period is set, a response byapplicants within 45 days will expedite processing.If the statement submitted during this period isdefective, another letter is sent from Licensing andReview detailing the deficiencies and givingapplicant another opportunity to respond during thisperiod of informal correspondence.

If no response to the initial so called 45-Day Letteris received or if repeated efforts to correct a defectivestatement evidence an absence of cooperation on thepart of the applicant, a formal request for a statementin accordance with the statutes will be made. A30-day statutory period for response is then set.There is no provision for an extension of this timeperiod. If no proper and timely statement is received,the application will be held abandoned and theapplicant so notified. Such applications may berevived under the provisions of 37 CFR 1.137. Inre Rutan, 231 USPQ 864 (Comm’r Pat. 1986).

Any papers pertaining to property rights undersection 152 of the Atomic Energy Act, 42 U.S.C.2182, (DOE), or section 305(c) or the NationalAeronautics and Space Act, 42 U.S.C. 2457,(NASA), that have not been associated with theapplication file, or have not been made of record inthe file and processed by the Licensing and Reviewsection, must be sent to the Licensing and Reviewsection immediately.

151 Content of the Statements [R-11.2013]

The law requires the statement to set forth “the fullfacts” surrounding the conception and making of theinvention. These facts should include those whichare unique to that invention. The use of formparagraphs or printed forms which set forth only

Rev. 07.2015, October 2015100-37


broad generalized statements of fact is not ordinarilyregarded as meeting the requirements of thesestatutes.

The word “applicant” in both of these statutes isconstrued by the Office to mean the inventor or jointinventors in person, or an assignee, obligatedassignee, or a person who otherwise shows sufficientproprietary interest in the matter. Accordingly, inthe ordinary situation, the statements must be signedby the inventor or the joint inventors, or an assignee,obligated assignee, or a person who otherwise showssufficient proprietary interest in the matter ifavailable. This construction is consistent with thefact that no other person could normally be moreknowledgeable of the “full facts concerning thecircumstances under which such invention wasmade,” (42 U.S.C. 2457) or, “full facts surroundingthe making or conception of the invention ordiscovery” (42 U.S.C. 2182). If a request under 37CFR 1.48 for correction of inventorship is grantedduring pendency of an application in which aproperty rights statement has been filed, asupplemental statement executed by any addedinventor(s) is required and should promptly be filedwith Licensing and Review.

In instances where an applicant does not havefirsthand knowledge whether the invention involvedwork under any contract, subcontract, or arrangementwith or for the benefit of the Atomic EnergyCommission, or had any relationship to any workunder any contract of the National Aeronautics andSpace Administration, and includes in his or herstatement information of this nature derived fromothers, his or her statement should identify the sourceof his or her information. Alternatively, the statementby the applicant could be accompanied by asupplemental declaration or oath, as to thecontractual matters, by the assignee or other person,e.g., an employee thereof, who has the requisiteknowledge.

When an inventor applicant is deceased or legallyincapacitated, or where it is shown to the satisfactionof this Office that he or she refuses to furnish astatement or cannot be reached after diligent efforts,declarations or statements under oath setting forththe information required by the statutes may beaccepted from an officer or employee of the assignee

who has sufficient knowledge of the facts. The offerof such substitute statements should be based on theactual unavailability of or refusal by the applicant,rather than mere inconvenience. Where it is shownthat one of the joint inventors is deceased orunavailable, a statement by all of the otherinventor(s) may be accepted.

The following is an acceptable format for statementsto DOE or NASA assuming that no governmentfunds or other considerations were involved in themaking or conception of the invention. It is importantthat the information provided in the statement be anaccurate reflection of the fact situation at the timethe statement is made. While the sample below is inthe form of a declaration, a sworn oath is equallyacceptable.

Note that the statement must be in the form of anoath or declaration. Further note that the statementmust be signed by all the inventors. See also thenotice entitled “Statements Filed Under AtomicEnergy Act and NASA Act” published in 914 OG1 (Sept. 4, 1973) for further information.

I (We) _____________________ citizens ofresiding at declare: That I (we) made andconceived the invention described and claimedin patent application number filed in the UnitedStates of America on titled.I (We) ________________ citizens of________________ residing at________________ declare: That I (we) madeand conceived the invention described andclaimed in patent application number________________ filed in the United Statesof America on ________________ titled________________.(Include completed I. or II. below)I. (for Inventors Employed by an Organization)That I (we) made and conceived this inventionwhile employed by ________________.That the invention is related to the work I am(we are) employed to perform and was madewithin the scope of my (our) employmentduties;That the invention was made during workinghours and with the use of facilities, equipment,materials, funds, information and services of________________.

100-38Rev. 07.2015, October 2015


Other relevant facts are: ________________.That to the best of my (our) knowledge andbelief based upon information provided by________________ of ________________:-OR-II. (For Self-Employed Inventors)That I (we) made and conceived this inventionon my (our) own time using only my (our) ownfacilities, equipment, materials, funds,information and services.Other relevant facts are ________________That to the best of my (our) knowledge andbelief:(Include III. and/or IV. below as appropriate)III. The invention or discovery was not madeor conceived in the course of, or in connectionwith, or under the terms of any contract,subcontract or arrangement entered into withor for the benefit of the United States AtomicEnergy Commission or its successors EnergyResearch and Development Administration orthe Department of Energy.-AND/OR-IV. The invention was not made under nor isthere any relationship of the invention to theperformance of any work under any contractof the National Aeronautics and SpaceAdministration.V. The undersigned inventor(s) declare(s)further that all statements made herein of hisor her (their)own knowledge are true and thatall statements made on information and beliefare believed to be true and further that thesestatements were made with the knowledge thatwillful false statements and the like so madeare punishable by fine or imprisonment, orboth, under Section 1001 of Title 18 of theUnited States Code and that such willful falsestatements may jeopardize the validity of theapplication or any patent issuing thereon.Inventor’s Signature________________Post Office Address________________Date________________Inventor’ s Signature________________Post Office Address________________Date________________

Rev. 07.2015, October 2015100-39


Chapter 100 Secrecy, Access, National Security , … · Chapter 100 Secrecy, Access, National...

Documents

Transcript of Chapter 100 Secrecy, Access, National Security , … · Chapter 100 Secrecy, Access, National...