100

OCR transcription for search; preserved printed pages are authoritative

# Chapter 100 Secrecy and Access

101 General

102
Information as to Status of an Application

103
Right of Public to Inspect Patent Files and some
Application Files

104
Power to Inspect Application

105
Disbarred Attorney Cannot Inspect

106
Control of Inspection by Assignee

106.01
Rights of Assignee of Part Interest

Special Security Cases

107
"Secrecy Order" Cases

107.01
"Review" of applications for Secrecy
Order

107.02

Prosecution of "Secrecy. Order" Cases

108

Applications relating to Atomic Energy
Security Markings

109

## 101 General

Extract from Rule 14 Application preserved in se-
crecy. (a) Pending applications are preserved in
secrecy. No information will be given by the Office
respecting the filing by any particular person of an
application for a patent, the pendency of any particular
case before it, or the subject matter of any particular
application, nor will access be given to or copies fur-
nished of any pending application or papers relating
thereto, without written authority of the applicant,
or his assignee or attorney or agent, unless it shall be
necessary to the proper conduct of business before the
Office or as provided by these rules.

[Old Rule 15]

Examiners, while holding interviews with attor-
neys and applicants, should be careful to prevent
exposures of files and drawings of other applicants.
(Notice of June 12, 1918, Revised.)

## 102 Information as to Status of an Application

The office will give information to any mem-
ber of the public as to the present status of an
application in the matter of its being patented
or abandoned where that application is:

(A) a prior application of which a patented
application was a continuation or division.

(B) an application referred to in a U. S.
patent.

Such information can be had on written re-
quest to the Commissioner of Patents.

## 103 Right of Public to Inspect Patent Files and Some Application Files

Rule 11 Patent files open to the public. After a
patent has been issued, the specification, drawings, and
all papers relating to the case in the file of the patent
are open to inspection by the general public, and copies

may be furnished upon paying the fee therefor. The file
of any terminated interference involving a patent, or an
application on which a patent has subsequently issued,
is similarly open to public inspection and procurement
of copies.

[Old Rule 16]

Upon publication of an abstract, the entire
application becomes available to the public for
inspection and obtaining copies. See 619 O. G.
258.

As a continuation, continuation-in-part or a
division patent relies on the filing date of an
earlier filed application, the public is entitled
to see that portion of the earlier filed applica-
tion relied upon even though the earlier filed
application is still pending. Also the public is
entitled to see what prosecution, if any, of the
subject matter of the patent claim of a continu-
ation, continuation-in-part, or division patent
was had in the parent case. In such situations
where the parent application is still pending,
the usual procedure is for the interested party
to file a petition in duplicate to the Commis-
sioner for access to the parent application. The
duplicate copy is sent by the law examiner to
the owner of the parent application, who is
given a limited period, as ten days, within which
to state any objection he may have to the grant-
ing of the petition. If no objection is raised,
the petition is approved by the law examiner ;
otherwise a decision is rendered by the Com-
missioner. If the applicant does not object
the petitioner is permitted to see the entire par-
ent application. If the applicant does object
to the petitioner seeing the entire application
the petitioner is given a certified copy of only
that portion of the parent application that re-
lates to the common subject matter.

Extract from Rule 14. (b) Abandoned applications
are likewise not open to public inspection, except that
if an application referred to in a United States patent
is abandoned and is available, it may be inspected or
copies obtained by any person on written request, with-
out notice to the applicant. Abandoned applications
may be destroyed after twenty years from their filing
date, except those to which particular attention has
been called and which have been marked for preserva-
tion. Abandoned applications will not be returned.

## 104 Power to Inspect Application

No person except the applicant, the assignee,
whose assignment is of record, or the attorney of
record will be permitted to have access to the file
of any application, except as provided for under

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the interference rules, unless written authority
from the applicant, assignee, or attorney, identify-
ing the application to be inspected, is filed in the
case to become a part of the record thereof, or upon
the written order of the Commissioner, which will
also become a part of the record of the case. (Order
No. 1271)

Every power to inspect must be approved in writ-
ing by the Examiner in charge of the division to
which the application is assigned before permission
to inspect is granted with the exception that the
Attorneys' and Record Room and the Manuscript
and Lithographie Branch may approve such powers.
This authority of the Examiner extends also to the
period between allowance and issue.

Power to inspect or to make copies presented at
the Attorneys' and Record Room or to the Manu-
script and Lithographic Branch must be approved
in writing by the head of the Attorneys' and Rec-
ord Room or the Manuscript and Lithographic
Branch, both of whom are hereby authorized to
permit inspection or supply copies to authorized
persons. (Extract from Commissioner's Adminis-
trative Order No. 10, Dec. 16, 1946)

Powers to inspect allowed applications may
be approved by the Head of the Issue and
Gazette Branch.

If the application is under a "Secrecy Order" (see
107), a power to inspect said application must be
submitted to Div. 70. (Extract from Notice of August
22,1949.)

Div. 70 does not pass upon the authority of the
attorney.

Where an applicant relied upon his applica-
tion as a means to interfere with a competitor's
business or customers, permission to inspect the
application may be given the competitor by the
Commissioner. (Ex Parte Bonnie-B Co. Inc.,
1923 C. D. 42; 313 O. G. 453.)

An unrestricted power to inspect given by an
applicant is, under existing practice, recognized
as good until and unless rescinded. The same
is true in the case of one given by the attorney
or assignee so long as such attorney or assignee
retains his connection with the application.

Permission to inspect given by the Commis-
sioner, however, is not of a continuing nature,
since the conditions that justified the permit to
inspect when given may not obtain at a later
date.

Orders for copies of "Secrecy Order" applications
should be approved and endorsed in Div. 70 before
copies are supplied. (Extract from Notice of August
22, 1949.)

## 105 Disbarred Attorney Cannot Inspect

Patent Office employees are forbidden to hold
either oral or written communication with a
disbarred attorney regarding an application

unless it be one in which said attorney is the
applicant. Power to inspect given a disbarred
attorney will not be accepted by the Examiner.

## 106 Control of Inspection by Assignee

The assignee of the entire interest in an appli-
cation may intervene in the prosecution of the
case, appointing an attorney of his own choice.
(See Rule 32.) Such intervention, however,
does not exclude the inventor from access to the
application to see that it is being prosecuted
properly, unless the assignee makes specific re-
quest to that effect. Even when such request is
made, the applicant may be permitted to inspect
the case on sufficient showing why such inspec-
tion is necessary to conserve his rights.

## 106.01 Rights of Assignee of Part In- terest

While it is only the assignee of the entire
interest who can intervene in the prosecution of
an application or interference to the exclusion
of the applicant, an assignee of a part interest
or a licensee of exclusive right is entitled to
inspect the application. But compare 409.

## 107 "Secrecy Order" Cases

Public Law 256, approved Feb. 1, 1952, 66
Stat. 3 provides, in part, that any invention
in which the. Government does not have a prop-
erty interest, and whose publication or dis-
closure by the granting of a patent might, in
the opinion of the Secretary of Commerce, be
detrimental to the national security, shall be
made available to the defense agencies. Upon
notification by the defense agencies, the Secre-
tary of Commerce is directed to order that such
inventions be kept secret and to withhold the
grant of a patent for such period as the national
interest requires. Where the Government has
a property interest, the interested Government
agency determines whether to notify the Secre-
tary of Commerce to keep the invention secret.

Under Public Law 256, a license is required
to file applications in foreign countries if such
filing takes place within six months after filing
in the United States. The powers and duties
conferred on the Secretary of Commerce by this
act are delegated to the Commissioner of
Patents (656 O. G. 8).

## 107.01 "Review" of Applications for Secrecy Order

Under Public Law 256, the obligation is
directly on the Patent Office to appreciate the
possible interest of the defense agencies in
pending applications and to take steps to make
them available to such agencies. In order for
desired controls to be effective against foreign

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filing; these steps must be taken at the time the
application is received in the examining divi-
sion as a new application. See Executive
Examiner's Notice of Feb. 5. 1942:

It is the responsibility of the Primary
Examiner to see that all applications are
screened for this purpose and that the applica-
tions selected for "review" are promptly for-
warded to Division 70.

The defense agencies also make known to
the Patent Office specified technical fields or
categories in which they have a particular
interest. These are transmitted by Division 70
to the divisions directly concerned. The Pri-
mary Examiners are responsible for submitting
all applications within these fields or categories
to Division 70 for review. When an application
has been so "reviewed" the Primary Examiner
is relieved of responsibility in the event any
protest based on security breach follows from
the issuance of a patent.

Applications in which the Government has
an interest need not be reviewed under Public
Law 256 in the Patent Office. Unusual situa-
tions should be brought to the attention of
Division 70. (For treatment of security mark-
ings see Sec. 109.)

Applications in the process of being reviewed
by Division 70 may be borrowed by the examiner
when reached for action. If applications are
submitted for review as soon after filing as
possible, they will ordinarily be returned in
time for examination purposes. Where an ap-
plication holding the division date, in which
review has not been completed, is found to be
allowable, the situation should be called to the
attention of Division 70. When the security
status of the application cannot be promptly
decided, Division 70 will report the progress
that has been made to the Supervisory Exami-
ner. Any action to be taken in the case, for the
purpose of advancing said division date, must
be arranged through the Supervisory Examiner.

# 107.02 Prosecution of "Secrecy Order" Cases

"Secrecy Order" Cases are examined as in
other cases, but may not be passed for issue; nor
does an interference involving one or more
secret cases proceed beyond the approval of

the preliminary statements.

In case of a final rejection, while such action
must be properly responded to within the six
months' period, an appeal, if filed, will not be
set for hearing by the Board of Appeals; for
if the appeal were heard and adversely passed
on, appellant in order to preserve his rights
would have to go into open court with his case.

In the case of an Interference involving a
"Secrecy Order" Case, see 1111.04.

When a "Secrecy Order" Case is in condition
for allowance a notice of allowability [Form
D-10] is issued, thus closing the prosecution.
Any amendments received thereafter are treated
as are amendments filed after final rejection in
an ordinary case; i. e., they may be entered if
found free from objection; otherwise they are
denied admission. The applicant will not ordi-
narily be advised of their nonentry, and the
reasons therefor until the application is released
from the "Secrecy Order."

# 108 Applications Relating to Atomic Energy

Applications relating to atomic energy as
recited in Rule 14 (c) must be promptly sub-
mitted to Division 70.

# 109 Security Markings

Under Executive Order 10,290, 16 Federal
Register Number 188, page 9795, standards are
prescribed for the marking, handling, and care
of official information which requires safeguard-
ing in the interest of security.

Papers marked as prescribed in the Execu-
tive order, and showing that such marking is
applied by, or at the direction of, a Govern-
ment Agency, are accepted in patent applica-
tions. All applications or papers in the Patent
Office bearing words such as "Secret," "Confi-
dential," or "Restricted" must be promptly re-
ferred to Division 70 for clarification or security
treatment. Under no circumstances can any
such application, drawing, exhibit, or other
paper be placed in public records, such as the
Patented Files, until all security markings have
been considered and declassified or otherwise
explained.

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