102 Information as to Status of an Application.docx
- 1. (i) a 37 CFR 1.14 Patent application preserved in Confident. (a) Confidentiality of patent application information. Patent application that have not been published under 35 U.S.C.122 (b) are generally in confidence to 35U.S.C.122 (a) .Information concerning the filing, pendency or subject matter of an application, will only to given to the public as set forth in 1.11 or in this section (1) Records associated with patent applications(see paragraph (g) of this section for international applications and paragraph (j) of this section international design application ) may available in the following situations; Patented applications and statutory invention registration . The file of an application that has issued as a patent or published as a statutory invention registration is in available the file public as application , or a specific document in the file of such an application may be provided upon request and payment of the appropriate fee set forth in 1.19(b). (i) Published abandoned application . The file of an abandoned published application is available to the published set forth in . 11 (a) . A copy of the application is available to the public as set forth in 1.11 A copy of the application – as-filed , the filed ,the file contents of the published application , orca specific document in the file of the published application may be provided to any person upon request and payment of the appropriate fee set forth in 1.19(b). (ii) Published pending application. A copy of the application- as filed, the file contents of the application , or a specific document in the file of a pending published application may be provided to any person upon request and payment of the appropriate set forth 1.19(b) (iii) Published pending application .A copy of the application –as – filed, the file contents of the application ,or a specific document in the file of appending published application may be provided to any person upon request and payment of the appropriate fee set forth in 1. 19(b) . If a redacted copy of the application was used for the patent application publication, the copy of the specification, drawing , and papers may be limited to a redacted copy . The office will not provide access to the paper file of a pending application that has bee published, except as provided in paragraph (c) or (i) of this section . (iv) Unpublished abandoned application (including provisional application ) that are identified or relied upon. The file contents of an unpublished , abandoned application may be made available to the public if the application is identified in a U.S. patent, a statutory invention registration, a U .S. patent application publication, an international publication of an international application under PCT Article 21(2), or a publication of an international registration under Hague Agreement Article 10(3) of an international design application designating the United States. An application is considered to have been identified in a document , such as a patent, when the application number or serial number and filing date, first named inventor, title, and filing date or other application specific information are provided in the text of the patent, but and not included in the printed . Also, the file contents may be made available to the public, upon a written request ,if benefit of the abandoned application is clammed under35. U.S C. 119 (e), 120, 121, 365, or 386 (c) In an application that has issued as a U.S . Patent, or has published as statutory invention registration, a U, S, patent application publication, an international publication of
- 2. (i) under Hague Agreement Article 10(3) .A copy of the application –as –filed, the file contents of the application, or a specific document in the file of the application may be provided to any person upon written request and payment of the appropriate fee (s) 1. 19(b) Unpublished pending application (including provisional application) whose benefit is claimed. A copy of the file contents of an unpublished pending application may be provided to any person upon written request any payment of the appropriate fee ( 1.19 (b) ), If the benefit of the application is 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 an application that has published as a statutory invention registration, a U. S .patent application publication, an international publication of an international application under PCT Article 21 (2), or a publication of an international registration under Hague Agreement Article 10 (3) .A copy of the application-as –filed or a specific document in the file of the pending application may also be provided to any person upon written request and payment of the appropriate fee (s) 1.19(b). The office will not provide access to the paper file of a pending application ,except as provided in paragraph (c) or (j) of this section. (v) Unpublished .pending application (including provisional applications) that are incorporated by reference or other wise identified . A copy of the application as originally filed of an unpublished pending application may be provided to any person ,upon written request and payment of the appropriate fee (s) 1.19(b) . if the application is incorporated by reference or otherwise identified in a U.S . patent ,a statutory invention registration, a U.S. patent application publication ,an international publication of an international application under PCT Article 21(2) , or a publication of an international registration under Hague Agreement Article 10(3) of an international design application designating the United States The office will not provide access to the paper file of a pending application ,except as provided in paragraph (c) or (i) of this section. (vi) When a petition for access or a power to inspect is required .Application that were not published or patented that are not the subject of a benefit claim under 35 U.S.C 119 (e) ,120, 121, 365. Or 386 (c) .in an application that has issued as a U,S .patent ,an application that has published as a statutory invention registration, a U.S. patent application publication an international publication of an international application under PCT Article 21 (2) ,or a publication of an international registration under Hague Agreement Article 10(3) of an international design application designating the United States ,are not the published patent application is identified in the file contents of another application ,but not the published patent application is identified in the file contents of another application, but not the published patent application or patent itself, a granted petition for access (see paragraph (i)) or a power to inspect (see paragraph ( c) of this section) is necessary to obtain the application ,or a copy of the application. (2) In formation concerning a patent application may be communicated to the public if the patent application is identified in a published patent document or in an application as set forth in paragraphs (a)v(1) through (a) (1) (vi) of this section . 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 published under 35 U.S .C. 122(b); (iii) This application “numerical identifier” which may be;
- 3. (i) (A) The eight –digit application number ( the two –digit series code plus the six – digit serial number); or (B) The six-digit serial number plus any one of the filing date of the national application ,the international filing date, or date of entry into the national stage; and (iv) Whether another application claims the benefit of the application (I e, whether there are any application that claim 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 such applications, the numerical identifier of the application ,the specified relationship between the application 9 e.g, continuation), whether the application is pending abandoned or patented ,and whether the application has been published under 35 U. S. C. 122 (b) ). Status information of application of an application means only the following information {A) where the application is pending abandoned, or patented; (B) Where the application has been published; ( C) the application number or the serial number plus any of the filing date of the national application, the international filing date of entry into the national stage; and 1. ACCESS TO IMAGE FILE WRAPPER (IFW) APPLICATIONS The Image File Wrapper (IFW) system uses image technology to replace the paper processing of patent applications in the office , paper component of these application files ( including the specification, other or declaration ,drawings, information disclosure statement, amendment, office action, and file jacket notations ) have been scanned to create electronic . image files. For patent applications in the IFW file is the official file and no access is granted to the original paper document sheets used to create the IFW file . All processing examination is conducted using the electronic images instead of the paper source documents. If an IFW if file has been created for a patented application , published application ,or an application to which a patented or published application claims domestic benefit ,the IFW (with the exception of non- patent litera ture ) is accessible through public PAIR. All patent application filed after jun30, 2003 ,have been scanned into the IFW system are available in public PAIR upon publishing or patenting .application filed before June 30, 2003 are scanned into IFW as incoming papers are received in the office. II. PUBLISHED APPLICATIONS 37 CFR 1.14 Patent applications preserved in confidence. (a) Confidentiality of patent application information. Patent applications 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 subject matter of an application for
- 4. (i) patent, including status information, and access to the application, will only be given to the public as set forth in (s )1.11 or in this section (b) (1)Records associated with patent application (see paragraph (g) of this section for international application and paragraph (j) Of this section for international application and paragraph (j) of this section for international design applications ) may be available in the following situations; (ii) Published abandoned application , The file of an abandoned published is available to the public set forth in (s) 1.11 (a), A copy of the application –as –filed, the file contents of the published application ,or a specific document in the file of the published application may be provided to any person upon request and payment of the appropriate fee set forth in & 1.19 (b). ( iii) Published pending applications . A copy of the application -as –filed, contents of the application, or a specific document in the file of the pending published application may be provided to any person upon request and payment of the appropriate fee set forth in $ 1.19 (b) .If a redacted copy of the application was used for the patent application publication ,the copy of the specification, drawing ,and papers may be limited to a redacted copy. The office will not provide access to 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 application ( including provisional application ) that are identified or relied upon . The file contents of an unpublished , abandoned application may be made available to the public if the application is identified in a U .s patent , a statutory invention registration, a ,U,S . patent application publication, an international publication of an international application under under PCT Article 21(2) , or a publication of an international registration under Hague Agreement Article 10(3) of an international design application designating the United States. An application is considered to have been identified in a document, such as a patent, when the application number or serial number and filing date, first named inventor, title, and filing date or other application specific information are provided in the text of the patent, but not when the same identification is made in a paper in the file contents of the patent and is not included in the printed patent. Also, the file contents may be made available to the public, upon a written request, if benefit of the abandoned application is 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 has published as a statutory invention registration, a U.S. patent application publication, an international publication of an international application under PCT Article 21(2), or a publication of an international registration under Hague Agreement Article 10(3). A copy of the application-as-filed, the file contents of the application, or a specific document in the file of the application may be provided to any person upon written request and payment of the appropriate fee (§ 1.19(b) ).The office will not provide access to the paper file of a pending application, except as provided in paragraph (c) or (i) of this section.
- 5. (i) (v) Unpublished. pending applications (including provisional application ) . that are incorporated by reference or otherwise identified . A copy of the application as originally filed of an unpublished pending application may be provided to any person, upon written request and payment of the appropriate fee (s) 1.19 (b), if the application is incorporated by reference or otherwise identified in a U. S . patent , a statutory invention registration. a U. S. patent application publication , an international publication of an international application under PCT Article 21(2) or a publication of an international registration under Hague Agreement Article 10(3)of an international design application designating the United States, are not available to the published to the public . if an application is identified in the file contents of another application, but not the published patent application or patent it self , a granted petition for access (see paragraph )( i) or a power to inspect (see paragraph ) (c) of this section) is necessary to obtain the application, or a copy of the application. (vi) (2) Information concerning a patent application may communicated to the public if the patent application is identified in a published patent document or in a application as set forth in paragraphs (a) (1) (i) through (a) (1) (vi) of this section . The information that may be communicated to the public (i.e, status information) includes: (vii) (i) Whether the application is pending ,abandoned or patented; (viii) (ii) Whether the application has been published under 35 U.S.C. 122(b); (ix) The application “numerical identifier” which may be; (x) (A) The eight –digit application number (the two-digit series code plus the six- digit serial number),or (xi) (B) The six –digit serial number plus any one of the filing date of the national application ,the international filing date, or date of entry into the national stage ,and (xii) (iv) Whether another application claims the benefit of the application (I e .,whether there are any application that clam the benefit of the filing date under 35.U.S.C.119 €,120, 121,365.or386 of the application), and if there are any such application ,the numerical identifier of the application, the specified relationship between the application ( e .g, continuation), whether the application is pending, abandoned or patented, and whether the application has been published under 35 .U.S.C. 122( b). Status information of an application means only the following information : (A) Whether the application is pending ,abandoned, or patented, (B) Whether the application has been published ; (C) The application number or the serial number plus any one of the filing date of the national application, the international filing date or the date of the entry into the national stage; and (D) Whether another application claim the benefit of the application claim the benefit of the application ( i, e . whether are any application that claim the benefit of the filing date under 35, U. S. C. 120, 121, 365 or 386 of the application ), and if there are any such applications, status information therefor as set forth in 37 CFR 1.14 (a) (2) (iv). A requester seeking status information regarding an application an should check the patent Application Information Retrieval (PAIR) system on the USPTO website at www.usto. gov /learning –and –resources/ support-centers/patent- electronic- business-
- 6. (i) center. Alternatively, , the requester may contact the File Information Unit (see MPEP $ 1730). The File Information Unit (FIU) will check the relevant office records and will inform the requester whether the application has been published or has issued as a patent, If the application has been published, the FIU will inform the requester of the publication number and publication date ,and if the application has been issued as a patent the patent number ,issue date and classification. If the application has not been published ,but is pending or abandoned then the FIU should determine whether the requester is (1) The applicant; (2) a patent practitioner of record; (3) the assignee or an assignee of an divided part interest; (4) the inventor or a joint ;or (5) a registered attorney or agent named in the papers accompanying the application papers filed under 37 CFR 1.53 or the national stage documents filed under 37 CFR 1.495, if a power of attorney has not been appointed under 37 CFR 1.32. If the requester is any of (1) –(5) as set forth above ,or if the application contain written authority granting access to the requester signed by any of (1) –(5) as set forth above ,then the requester is entitled to status information see 37 CFR 1.14 ( c ) and MPEP $ 104 for additional pertaining to who can provide written authority granting access to such information .If the requester is inquiring about whether a reply was received or when an office action can be expected ,the requester should be directed to call the Technology Canter (TC) to which the application is assigned. The assignment of an application to a TC can be determined from PALM intranet. If the requester is not any of 91) –(5) or a person with written authority from any of (1) – (5) as set forth above ,and the application is (1) identified by application number (or serial number and filing date) in a published patent document , or (2) an application claiming the benefit of the filing date of an application identified by application number (or serial number and filing date) in a published patent document ,then a written request including a copy of a published patent document (United States or foreign ) which refers to the specific application must be provided when requesting status information for the application . If the published patent document is not in English , then a translation of the pertinent part there of must also be included . The published patent document may be presented in person to the FIU or in written correspondence to the U.S .Patent and trademark office, for example by facsimile transmission. Any written correspondence must include a retune address or facsimile number. If the application is referred to by application number or serial number and filing date in a published patent document ( e.g, a U. S patent , statutory invention registration ,a U.S patent application publication , an international application publication or an international design application ) or in a U.S. application open to public inspection pursuant to 37 CFR .1. 14 (a) ,the requester is entitled to status information for the application . (The published patent document will at least identified the application from which the patent itself was issued ) PALM intranet should be used to determine the status of the application . If the requester asks whether there are any application on file which clam the benefit of the filing date of the in identified application, pursuant to( 37 CFR 1. 14 (a) (2) (iv) , status information ( application number filing date and whether the application is pending ,abandoned or patented ) for the application claiming benefit of the identified application may be given to the requester as well . PALM intranet should be used to
- 7. (i) determine the application number and filing date of any application claiming the benefit of the identified application may be given to the requester as well. PALM intranet should be used to determine the application number and filing date and of any application claiming the benefit of the filing date of the identified application. The requester should be informed of the national application listed in the ‘’child ‘’ section of the screen . If the child application is not shown to have been patented, PALM intranet may be used to determine whether the application is pending or abandoned . Alternatively, PALM intranet may be used with the patent number for continuity data for the patent ,other information contained on the screen, such as whether the application is a Continuation –in –part (CIP) ,continuation or divisional application ,the date of abandonment of the application, and the issue date, may be confidential information and should not be communicated . As to the extent of the chain of application for which status information is available ,the rule applies only to subsequent and not prior applications. 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 national stage application claiming the benefit of the filing date of a published international application and the United States of America has been indicated as a designated State in the international application, pursuant to 37 CFR .1. 14 (a) (2) (iv) ,the requester is entitled to status information for the national stage application as well as any application claiming the benefit of the filing date of the published international application, A copy of the first page of the published international application or of the corresponding page of the PCT Gazette must be supplied with the status request. The status request shout be made in writing to the International Legal Administration (see MPEP $1730 ). Alternatively ,inquiries relating to application claiming the benefit of the filing date of a published international application may be directed to the PCT Help desk, only the serial number and filing date ,or application number ,as well as where the application is pending , abandoned may be given for the national stage application and for any application claiming the benefit of the filing date of the refSerenced published international application ,Other informational contained on the continuity date screen ,such as whether the application is a CIP, continuation or divisional application the date of abandonment of the application and issue date may be confidential information and shout not be communicated. If the requester is not any of (1)- (5) as set forth above , but the application is an international design application maintained by the office in its capacity as a designated office (37 CFR 1.1OO3) for nation processing ,pursuant to 37 CFR 1. 14 ( a) (2) (iv) , the requester is entitled to status information for the international design application as well as any application claiming the benefit of the filing date of the published international design application . With respect to an international design application maintained by the office in its capacity as an office of indirect filing (37 CFR 1.1002), , status information may be made available where contained in the file of the international design application maintained by the office for national processing . STATUS LOCATION INFORMATION FOR OFFICE PERSONNEL When it is desired to determine the current location or status of an application, office personal should use PALM. If the application is an Image File Wrapper (IFW) application ,no location associated with the file.
- 8. (i) Office personnel requesting status/ location on information on application prior to 07 series applications that are not in the PALM system should contact the FIU ((see MPEP $ 1730) where the numerical index records of the above mentioned applications are maintained. 110 Confidential Nature of International Searching Application { R- 07 . 2015} PCT Article 30 Confidential Nature of the International Application. (1) (a) Subject to the provisions of subparagraph (b) ,the International Searching Authorities shall not allow access by any person or authority to the international application before the international publication of the application, unless requested or authorized by the applicant. (b) The provisions of subparagraph ( a) shall not apple transmittal to the competent International Searching Authority, to transmittals provided for under Article 13,and to communications provided for under Article 20. (2) (a) No national office shall allow access to the international application by third parties unless requested or authorized by the applicant before the earliest of the following dates: (i) date of the international publication of the international application: (ii) date of receipt of the communication of the international under Article 20, (iii) date of receipt of a copy of the international application under Article 22. (c) The provisions of subparagraph (a) shall not prevent any national office from informing third parties that it has designated from publishing that fact, Such information or publication may, however, contain only the following date : identification of the receiving office ,name of the applicant international filing date ,international application number and title of the invention. (d) The provisions of subparagraph (a) shall not prevent any designated office from allowing access to the international application for the purposes of the judicial authorities. (2) The provisions of subparagraph (2) (a) shall apply to any receiving office except as so far as transmittals provided for under Article 12 (1) are concerned . (3) For the purposes of the this Article, the term “access’’ covers any means by which third parties may acquire cognizance ,including communication and general publication, provided ,however, that no national office (4) (5) shall generally publish an international application or its translation before the international publication or if international publication has not taken place by the expiration of 20 months from the priority date. PCT Article 38 ConfidentiaL NATUREE OF THE International Preliminary Examination. (1) Nether the International Bureau nor the International Preliminary Authority shall , unless requested or authorized by the applicant ,allow access within the meaning ,and with the proviso ,of Article 30 (4) to the file of the international preliminary by
- 9. (i) any person or authority at any time ,except by the elected offices one the international preliminary examination repot has been established. (2) Subject to the provisional of paragraph (1) and Articles 36 (1) and (3) and 37 (3) (b) I neither the international Bureau nor the International preliminary Examining Authority shall, unless requested or authorized by the applicant ,withdrawal or non- withdrawal of the demand or of any election. 35 U. S. C.368 Secrecy of certain inventions; filing international applications in foreign countries. (a) International applications filed in the patent and Trademark office shall be subject to the provision of chapter 17. (b) In accordance with article 27 (8) of the treaty , the filing of an international application in a country other then the United States on the invention made in this country shall be considered to constitute the filing of an application in foreign country within the meaning of chapter 17, whether or not the United States is designated in that international application. (c) If a license to file in a foreign country is refused or if an international application is ordered to be kept secret and permit refused , the patent and Trademark office when action as a receiving office international Searching Authority, or International preliminary Examining Authority , may not disclose the Contents of such application to anyone not authorized to receive such disclosure. Although most international applications are published soon after the expiration of 18 months from the priority date ,PCT ARTICLE 21(2) (a), such publication dose not open up the Home copy or Search copy to the public for inspection ,except provide in 37 CFR 1.14 (g). 37 CFR 1.14 patent applications preserved in confidence. International applications. (1) Copies International application files for international application which designate the U.S which have been published in accordance with PCT Article 21(2) , copies of a document in such application files, will be furnished in accordance with PCT Articles 30 and 38 and PCT Rules 94.2 and 94.3, upon written request including a showing that the publication of the application of the application has occurredand that the U.S was designated ,and upon payment of the appropriate fee (see $ 1.19(b),if: (i) with respect to the Home Copy (the copy of the international application kept by the office in its capacity as the Receiving office ,see PCT Article 12(1) ,the international application was filed with the U.S. Receiving office; (ii) With respect to the Search Copy ( the copy of an international application kept by the office in its capacity as the International Searching Authority, see PCT Article12 (1) ,the U.S. acted as the International searching Authority ,except for the written opinion of the International Searching Authority which shall not be available until the expiration of thirty months from the priority date; or (iii) With respect to the Examination Copy (the copy of an international application kept by the office in its capacity as the international preliminary Examining Authority), the United States acted as the International preliminary Examining Authority ,an International preliminary Examining Report has issued ,and the United States was elected.
- 10. (i) (2)A copy of an English language translation of publication of an international application which has been filed in the United States and Trademark office pursuant to 35 U.S.C. 154(d) (4).will be furnished upon written request including a showing that the publication of the application in accordance with PCT Article 21 (2) has occurred and that the U.S was designated ,and upon payment of the appropriate fee ($ 1.19 (b) (4). (3) Access to international application files for international applications which the U.S and which have been published in accordance with PCT Article 21(2) ,or copies of a document in such application files ,will be permitted in accordance with PCT Articles 30 and 38 and PCT Rules 44 ter. 1.94.2 and 94.3,upon written request a showing that the publication of the application has occurred and that the U.S. was designated . (4) In accordance with PCT Article 30,copies of an international application-as filed under paragraph (a) of this section will not be provided prior to the international publication of the application pursuant to PCT Article 21 (2). (5) Access to international application files under paragraphs (a) (1) (i) through (a) (1) (vi) and (g) (3) of this section will not be permitted with respect to the Examination Copy in accordance with PCT Article 38. CFR 1.14 (g) applies to international applications having an international filing date on or after November 29, 2000, After publication of an application under 35 U.S.C. 122 (b), the USPTO will make available copies of the application file and also allow for access to those files in accordance with 37 CFR 1.14 (4) (a). Therefore, after publication of an international application designation the U.S .under PCT Article 21, the USPTO will make available copies of ,and allow access to ,those international application files which are kept in the USPTO (see 37 CFR 1.14 g). 37 CFR 1.14 (g) (1) sets forth those conditions upon which copies of international application files may be provided to the public. 37 CFR 1.14 (g) (1) (i) and (ii) address the situation where the U.S .acted as the receiving office and the International Searching Authority, respectively . Under these provisions, copies of the Home and Search Copies of the international file will be provided upon request. However, the written opinion established by the International Searching Authority will not be available until the expiration of 30 months from the priority date. 37 CFR 1.14 (g) (1) (iii) address the situation which the U.S acted as the International Preliminary Examining Authority (IPER ) has issued PCT Rule 94.2 provides that after issuance of the IPER, the IPEA shall provide copies of any document in the examination file do the elected offices upon request .PCT RULE 94 permits the elected offices to provide access to any documents in its files the submission of a copy of after international publication has occurred . Therefore ,the USPTO capacity as an elected office ,will provide a copy of the examination file in international application to a third party upon submission of a request complying with the requirement of 37 CFR 1.14 (g) (1) (iii). Requests for copies of an international application file under 37 CFR 1.14 (g) (1) must be in the form a written request sent to the International Patent Legal Administration and must include a showing that the international submission of a copy of the front page of the published international application. Additionally requests for copies of international application files must also be accompanied by the appropriate fee (37 CFR 1.19 (b).
- 11. (i) 37 CFR 1.14 (g) (2) provides that copies of English language of international applications ,which were published in a non- English language and which designated the U.S ,and which have been submitted the office pursuant to 35 U.S.C. 154 (d) (4), will also be available to the public. The USPTO will not provide general notification to the public of the filing of English language translation under 35U.S.C.154, under 35 U.S.C. 154,it is the responsibility of the applicant to notify any possible infringers for the purposes of obtaining provisional rights. 37 CFR 1.14 (g) (3) addresses access to the Home Copy and the Search Copy of the international application. Access to the Examination Copy of the international application is prohibited under 37 CFR 1.14 (g)(5) as required by PCT Article 38. 115 Review of Applications for National Security and Property Rights Issues {R -07. 2015} 35 U,S.C. 181 Secrecy of certain inventions and withholding patent . Whenever publication or disclosure by the publication of an application or by the grant of a patent on an invention in which the Government has a property interest might ,in the opinion of the opinion of the head of the interested Government agency, be detrimental to the national security, the Commissioner of patents upon being so notified shall order that the invention be kept secret and shall withhold the publication of an application or the grant of a patent therefor under the conditions set forth hereinafter. All provisional applications filed under 35 U.S.C.111(b), international applications filed under the PCT, and international design applications filed under the Hague Agreement, in the U.S. patent and Trademark Office (USPTO) are reviewed for the purposes of issuance of a foreign filing license pursuant to 35 U.S.C. 184. See also 37CFR 5.1(b). These applications are screened upon referred to the appropriate agencies for consideration of restriction Cons on disclosure of the subject matter as provided for in 35 U.S.C .181. If a defense agency concludes that disclosure of the invention would be detrimental to the national secrecy order is recommended to the Commissioner then issues a Secrecy order and withholds the publication of the application or the grant of a patent for such period as the national interest requires. For those applications in which the Government has a property interest (including applications indicating national security classified subject matter) responsibility for notifying the Commissioner for patents of the need for a Secrecy order resides with agency having that interest , Application that are national security classified (see 37 CFR 1.9 (I) may be so indicated by use of authorized national security markings (e.g, “Confidential “, “secret” or “Top Secret’’ ) .National secur classified documents filed in the USPTO must be either hand-carried to Licensing and Review or mailed to the office in compliance with 37 CFR 5.1 (a) and Executive order 13526 of December 29,2009 . However, the office will accept such applications filed with the USPTO via the Department of defense secret Internet protocol Router Network (SIPRNET) an consider them as filed via the USPTO’S electronic filing system for purposes of (37 CFR 1.16 (t) and (37 CFR 1.1445 (a) (ii). As set forth in 37 CFR 5.1 (d) ,the applicant in a national
- 12. (i) security classified patent application must obtain a secre order from the appropriate defense agency or provide authority to cancel the markings . A list of contacts at the appropriate defense agency can be obtained by contacting Licensing and Review. A Second purpose for the screening of all applications, with an exception for provisional applications, is to identify inventions in which DOE or NASA might have property rights. See 42 U.S.C. 2182, 51 U.S.C. 20135, and MPEP $ 150. MPEP $ 140. Provisional applications filed in a foreign language are also screened under these provisions . The office will make an attempt to determine the subject matter of the applicant may be required to provide at least an English language abstract of the information for screening purposes. It is strongly recommended that if the applicant is possession of an English language description of the technology, it should be filed with the provisional application to prevent screening delays. All applications are required to be cleared from secrecy review before forwarding to issue . If the L&R cord on the general information display does not equal 1, then in an IFW application, a message should be sent to LREVINCOMINGDOCS. The patent Application locating and Monitoring (PALM) System’s general information display discloses the current Licensing and Review status as well as the historical status . The indicator “ L&R code ‘’ displays the current status of the application while the indications “Third Level Review “ and “Secrecy order ‘’ display the historical status of the application An L&R cord of ‘’3’’ or a “Third Level Review’’ of ‘’yes’’ indicates that application is/ has been considered for security screening. An L&R code of ‘’4’’ indicates that application is currently under Secrecy order. In this case , the application has been converted to a paper application file and there should be no images maintained in the Image File Wrapper system (IFW). While the initial screening preformed only by designated personnel, all examiners have a responsibility to be alert for obviously sensitive subject matter either in the original disclosure or subsequently introduced , for example, by amendment If the examiner is aware of subject matter which should be subject to screening by appropriate office personnel , this should be brought to the attention of Licensing and Review, to any of the supervisory patent examiners (SPEs) of Technology Center Working Group 3640. 115 Review of Applications for National Security and Property Rights Issues { R- 07.2015 } 35 U.S.C. 181 Secrecy of certain inventions and withholding of patent.
- 13. (i) Whenever publication or disclosure by the publication of an application or by the grant of a patent of a patent on an invention in which the Government has a property interest might ,in the opinion of the interested Government agency ,be detrimental to the national security, the Commissioner of patents upon being so notified shall order that the invention be kept secret and shall withhold the publication of an application or the grant of a patent therefor under the conditions set forth hereinafter. All provisional applications filed under 35 U.S.C. 11 (b), non provisional applications filed under 35 U.S.C. 111(a) ,international applications filed under the PCT, and international design applications filed under the Hague Agreement, in the U.S Patent and Trademark office ( USPTO) are reviewed for the purposes of issuance of a foreign filing license pursuant to 35 U.S.C. 184. See also 37 CFR 5.1 (b). These applications are screened upon receipt in the USPTO for subject matter that ,if disclosed might impact the national security. Such applications are referred to the appropriate agencies for consideration of restriction on disclosure of the subject matter as provided for in 35 U.S.C. 181. If a defense agency concludes that disclosure of the invention would be detrimental to the national security ,a secrecy order is recommended to the Commissioner for patents . The Commissioner then issues a Secrecy order and withholds the publication of the consideration or the grant of a patents for such period as the national interest requires. For those applications in which the Government has property interest (including applications indicating national security classified subject matter,) responsibility for notifying the Commissioner for patents of the need for a Secrecy order resides with the agency having that interest . Applications that are national security classified ( see 37 CFR 1.19 (i) Maybe so indicated by use of authorized national security making(e .g; ‘’confidential’’ secret’’ or ‘’Top secret’’.) National security classified document filed in the USPTO must be either hand-carried to Licensing and Review or mailed to the office in compliance with 37 CFR 5.1 (a) and executive order 13526 of December 29.2009. However ,the office will accept such applications filed with the USPTO via the Department of Defense Secret Internet protocol Router Network (SIPRNET ) and consider them as filed via the USPTO’S electronic filing system for purposes 37 CFR 1.16 (t) and 37 CFR 1.445 (a) (ii). As set forth in 37 CFR 5.1 (d) ,the application in national security classified patent application must obtain a secrecy order from the appropriate defense agency or provide authority to cancel the markings . A list of contacts at the appropriate defense agency can obtained Licensing and Review A second purpose for the screening of all applications ,with an exception for provisional applications, is to identify inventions in which DOE or NASA might have property right . See 42 U.S.C. 2182 ,51U.S.C.20135, and MPEP $ 150. A third function of the screening procedure is to process foreign filing license petitions under 37 CFR 5.12 (a) . see MPEP $ 140 . Provisional applications filed in a foreign language are also screened under these provisions . The office will make an attempt to determine the subject matter of the application, but the applicant may be required to provide at least an English language
- 14. (i) abstract of the information for screening purpose, It is in strongly recommended that if the applicant is prevent screening delays. All application are required to be cleared from secrecy review before forwarding to issue . If the L$R code on the general information display does not equal 1, then in an IFW application, a massage should be sent to LRVINCOMINGDOCS. The patent Applications Application Locating and Monitoring ( (PALM) system’s general information display disclose the current Licensing and Review status as well Third Level’’ and Secrecy Order the historical status The indicator ‘’L&R code ‘’ displays the current status of the application while the indicators ‘’ display the historical status of the application. An L&R code of ‘’3’’ or a Third Level Review’’ of ‘’yes’’ indicates that application is /has been considered for security screening . An L&R code of ‘’4’’ indicates the application is currently under Secrecy Order. In this case the application has been converted to a paper application file and there should be no images maintained in this Image File Wrapper system (IFW) While the initial screening is performed only by designated personnel, all examiners have a responsibility to be alert for obviously sensitive subsequently introduced ,for example by amendment, If the examiner is aware of subject matter which should to subject to screening by appropriate office personnel, this should be brought to the attention of Licensing and Review, to any of the supervisory patent examiners (SPEs) of Technology Center Working Group 3640. 120 Secrecy Orders { R- 07.2015} 37 CFR5 .2015 Correspondence . ( a) All correspondence in connection with this part, including petitions, shout be addressed to ;Mail Stop L&R /Commissioner for patents ,p .o. Box 1450, Alexandria, Virginia 22313 -1450 . (c) Definitions. ( 1) Application as used in this part includes ($ 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 ,foreign country ,foreign patent office, foreign patent agency ,or international agency (other then the United States patent and Trademark office acting as a Receiving office for international applications (35 U.S C. 361, $ 1.412 ) or as an Office of indirect filing for international design applications ( 35 U.S C. 382, $ 1.1002 ) any of the following : An application for patent, international application ,international design application, or application for the registration of a utility model ,industrial design, or model. ( c) patent applications and documents relating thereto that are national security classified (see $ 1.9 (i) of this chapter ) and contain authorized national security markings (e. g; “Confidential’’ Secret’’ or Top Secret’’ )are accepted by the office .National security classified documents filed in the office must be either hand-carried to
- 15. (i) Licensing and Review or mailed to the office in compliance with paragraph (a) of this section. (d) The applicant in a national security patent application must obtain a secrecy order pursuant to $ 5.2 (a). if a national security classified patent application is filed without a notification pursuant to $ 5.2(a), the office will set a time period within which either the application must be declassified ,or the application must be placed under a secrecy order pursuant to $ 5.2 (a) ,or the applicant must submit evidence department or agency in order pursuant to $ 5.2 (a) from the relevant department or agency in order to prevent abandonment of the application. If evidence of a good faith effort to obtain a secrecy order pursuant to 5.2 (a) from the relevant department or agency is submitted by the applicant within the time period set by the office ,but the application has not been declassified or placed under a secrecy order pursuant to $ 5.1 (a) , the office will again set a time period within which either the application must be declassified, or the application must be placed under a secrecy order pursuant to $ 5.2(a),or the applicant must submit evidence of a good faith effort to again obtain a secrecy order pursuant to $ 5.1 (a) from the relevant department or again obtain a secrecy order pursuant to $ 5.2 (a) from the relevant department or agency in order to prevent abandonment of the application. (e) An application will not be published under $ 1.211 of this chapter or allowed under $ 1.311 of this chapter if publication or disclosure of the application would be detrimental to national security. An application under national security review will not be published at least until six months from its filing date or three mother s from the date the application was referred to a defense agency, whichever is later . A national security classified patent application will not be published under $ 1.211 of this chapter or allowed under $1.311of this chapter until the application is declassified and any secrecy order under $ 5.2 (a) has been rescinded (f) Applications on inventions made outside the United State sand on inventions in which a U.S. Government defense agency has a property interest will not be made available to defense agencies . 37 CFR 5.2 Secrecy order (a) When notified by the chief officer of a defense agency that publication or disclosure of the invention by the granting of patent would be detrimental to the national security, an order that the invention be kept secret will be issued by the Commissioner for patents. (b) Any request for compensation as provide in 35 U.S.C 183 must not be made to the patent and Trademark office ,but directly to the department or agency which caused the secrecy order to the be issued. (c) An application disclosing any significant part of the subject matter o fan application under a secrecy order pursuant to paragraph (a) of this section
- 16. (i) also falls within the scope of such secrecy order . Any such application that is pending before the office must be promptly brought to the attention of Licensing and Review, unless such application is itself under a secrecy order pursuant to paragraph (a) of this section . Any subsequently filed application containing any significant part of the subject matter of an application under a secrecy order pursuant to paragraph (a) of this section must either be hand- carried to Licensing and Review or mailed to the office in compliance with $ 5.1(a). 7 CFR 5.3 prosecution of application under secrecy order; withholding patent. Unless specifically ordered otherwise ,action on the application by the office and prosecution by the applicant will proceed during the time an application is under secrecy order to the point indicated in this section; (a) National application under secrecy order which come to a final rejection must be appealed or other wise prosecuted to avoid abandonment . Appeals in such cases must be completed by the applicant but unless otherwise specifically ordered by the commissioner for patents will not be set for hearing until the secrecy order is removed. (b) An interference or derivation will not be instituted involving a national application under secrecy order . An applicant whose application is under secrecy order may suggest an interference ($ 41.202 (a) of the title) but the office will not act on the request while the application remains under a secrecy order. (c) When the national application is found to be in condition for allowance except for the secrecy order the applicant and the agency which caused the secrecy order to the issued be notified. This notice (which is not a notice of allowance under $ 1.311 of this chapter ) dose not require reply by the applicant and places the national application in a condition of suspension until the secrecy order is removed .When the secrecy order is removed the Patent and Trademark office will issue a notice of allowance under $ 1.311 of this chapter , or take such other action as may then be warranted. (d) International applications and international design applications under secrecy order will not be mailed delivered, or otherwise transmitted to the international authorities or the applicant International application under secrecy order will be processed up to the point where ,if it were not for the secrecy order ,record and search copies would be transmitted to the international authorities or the applicant. 37 CFR 5.4 Petition for rescission of order. (a) A petition for rescission or removal of a secrecy order may be filed by ,or on behalf of ,any principal in affected there by . Such petition may be in letter form ,and it must be in duplicate. (b) The petition must recite any and all facts that purport to render the order ineffectual or futile if this is the basis of the petition . When prior publications or patents are alleged the petition must give
- 17. (i) complete date as to such publications or patens and should be accompanied by copies thereof . (c) The petition must identify any contract between the Government and any of the principals under which the subject matter of the application or any significant part there fo was developed 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 by 35 U.S.C.181, from a secrecy order cannot be taken until after a petition for rescission of the secrecy order has been made and denied. Appeal must be taken within sixty days from the date from the date of the denial ,and the party appealing ,as well as the department or agency which caused the order to be issued, will be notified of the time and place of hearing 37 CFR 5.5 Permit to disclose or modification of secrecy order. (a) Consent to disclosure ,or to the filing of an application abroad, 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 recite the reason or purpose for the proposed disclosure. Where any proposed disclose is known to be cleared by a defense agency to receive classified information ,adequate explanation of such clearance should be made in the petition including the name of the agency or department granting the clearance and that date and degree thereof .The petition must be filed in duplicate (c) In a petition for modification of a secrecy order to permit filing abroad ,all countries in which it is proposed to file must be made know as well as all attorneys ,agents and other to whom the material will be consigned prior to begin lodged in the foreign patent office. The petition should include a statement vouching for the loyalty of the proposed discloses and where their clearance status in this or the foreign country is known all details should be given (d) Consent to the disclosure of subject matter from one application under secrecy order may be deemed to be consent to the disclosure of common subject matter in other applications under secrecy order so long as not taken out of context in a manner disclosing material beyond the modification granted in the first application. (e) Organizations requiring consent for disclosure of applications under secrecy order to persons or organizations in connection with repeated routine operation may petition for such consent in the form of a general permit . To be successful such petitions must ordinarily recite the security clearance status of the discloses as sufficient for the highest classification of material that may be involved. 1. SECRECY ORDER TYPES Thee types of Secrecy Order , each of a different scope , are issued as follows ; (A) Secrecy order and permit for Foreign Fi ling in Certain Countries (Type I secrecy order )- to be used for those patent applications that disclose critical
- 18. (i) technology with military or space application in accordance with DoD Directive 5230.25 ‘’Withholding of Unclassified Technical Data From public Disclosure ,’’based on 10 U.S.C.130’’ Authority to withhold from public Disclosure Certain Technical Date.’’ (B) Secrecy order and permit for Disclosing classified Information (Type II secrecy order)- to be used for those patent applications which contain date that is properly classified or classified under a security guideline where the patent application owner has a current DoD Security Agreement ,DDFROM 441. If the application is classifiable, this secrecy order allows disclosure of the technical information as if it were classified as prescribed in the National Industrial Security program operating Manual (NISPOM). ( c) General Secrecy order (Type III secrecy order )- to be used for those patent applications that contain data deemed detrimental to national security if published or disclosed , including that data properly classifiable under a security guideline where the patent application owner dose not have a DoD Security Agreement. The order prevents disclosure of the subject matter to anyone without an express written consent from the Commissioner for Patents . However, quite often this type of secrecy order includes a permit ’’Permit A’’ which relaxes the disclosure restrictions as set forth in the permit The type I secrecy order is intended to permit the widest utilization of the technical data in the patent application while still controlling any publication or disclosure which would result in an unlawful exportation. This type of Secrecy order a identifies the countries where corresponding patent applications may be filed . Countries with which the United States has reciprocal security agreements are Australia ,Canada ,Denmark , France Greece, Italy ,Japan, Luxembourg, Netherlands, Norway, Portugal, Republic of Korea ,Spain, Sweden, Turkey and the United KINGDOM. Please note that applications subject to a secrecy order cannot be filed directly with the European patent office since no reciprocal security agreement with this organization exists. Applications must be field in the individual EPO member countries identified above .Applicant must arrange filing of such subject matter through the agency sponsoring the secrecy order. The intent of the Type II secrecy order is to treat classified and classifiable technical data presented as a patent application in the same manner as any other classified material. Accordingly, this secrecy order will include a notification of the classification level of the technical data in the application. A secrecy order is used where the other types of orders do not apply , including order issued by direction of a agencies other then the Department of Defense. A secrecy order should not be construed in any way to mean that the Government has adopted or contemplates adoption of the alleged invention disclosed in an application; nor is it any value of such invention. II.RELATED SUBJECT MATTER The secrecy order apply to the subject matter of the invention, not just to the patent application itself. Thus the secrecy order restricts disclosure or publication of the invention in any form . Furthermore, other patent applications already filled or later filed which contain any significant part of the subject matter of the application also fall within the scope of the order and must be brought to the attention of Licensing &review if such applications are not already under secrecy order by the Commissioner.
- 19. (i) The effects of a secrecy order are detailed in the notifying letter and include restrictions on disclosure of the invention and delay of any patent grant until the order is rescinded III. CORRESPONDENCE When the Secrecy order issues , the law specifies that the subject matter or any material information relevant to the application , including published details of the order , invention ,shall not be published or disclosed to any person not aware of the invention prior to the date of the order ,including any employee of the principals except as permitted by the secrecy order. The law also requires that all information material to the subject matter of the application be kept in confidence ,unless written permission to disclose is first obtained from the Commissioner for patents except as provided by the secrecy order . Therefore, all correspondence to be filed in all application which in subject to secrecy order and which directly related to the subject matter covered by the secrecy order must be transmitted to the office in a manner which would preclude disclosure to unauthorized individuals and addresses as set forth in 37 CFR 5.1 (a). Use of facsimile transmission is not permitted. 37 CFR 1.6(d) (6). Subject matter under secrecy order must be safeguarded under conditions that will provide adequate protection and prevent access by unauthorized persons. When applicants desire to change the power of Attorney in an application under secrecy order ,application is required to provide a statement that the new attorney (s) has been apprised of the secrecy order. In the case of applications bearing National security classification markings pursuant of an Executive order ,e. g; ‘’Confidential ‘’ or ‘’secret,’’ application must provide a Do D cage code as evidence of the ability to accept and store classified information. Applicants no longer need to provide individual personal information to ensure a proper security clearance, personnel controlling the cleared correspondence address bear the burden of ensuring that individuals obtaining classified information from the correspondence address follow the proper procedures for handing classified information. Iv .INTERNATIONAL APPLICATIONS (PCT) AND INTERNATIONAL DESIGN APPLICATIONS If the secrecy oderis applied
- 20. (i) (i)
- 21. (i)