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
Power to Inspect Application

104

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
D-10 Notice

108
"Special Handling" Cases

109
Government Owned "3-Year" Response
Cases and Suspended Action Cases

## 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 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.

no

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
the interference rules, unless written authority
from the applicant, assignee, or attorney, identify-

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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 Lithographic 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 Lithographie
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)

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
Rev. 1 Nov. 1950

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
knowledge of the steps being taken in such
prosecution. But compare 409.

## 107 "Secrecy Order" Case

A "Secrecy Order" case is one which is ad-
judged to be for an invention whose publication
might be detrimental to the public safety or
defense.

The Act of October 6, 1917, as amended, 35
U. S. C. 42, provides that whenever the publi-
cation or disclosure of any invention or discov-
ery by the granting of a patent might, in the
opinion of the Commissioner of Patents, be
detrimental to the public safety or defense, he
may order that the invention be kept secret
and withhold the grant of a patent for such a
period or periods as in his opinion the na-
tional interest requires.

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

The advisory agencies have expressed interest in
reviewing applications in specified technical fields or
categories to consider the need for Secrecy under 35
U. S. C. 42. The categories directly pertinent to the
art examined in a particular division are made
known to that division by memorandum from Div.
70. The Primary Examiners are responsible for
submitting all cases within these categories to Div.
70 "for review". Markings placed on a file when it
is processed through review ordinarily relieve the
Primary Examiner of responsibility in the event any
protest follows from the issuance of a patent on
defense inventions. As the categories are, of neces-
sity, very generally worded and given a limited dis-
tribution within the Office, all examiners are urged
to also consider submitting for review any applica-
tion that appears to have exceptional merit and
which may be regarded as a defense invention.

Where the attorney of record is represented on
the Armed Services Patent Advisory Board (Army,
Navy, and Air Force), the application need not be
submitted to Div. 70. Departments other than these
may have cases pending in which the security inter-

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est should be determined before allowance is reached
and such applications are reviewed in the usual way.

To assure that early consideration is given to
defense inventions, and to avoid unnecessary conflict
between review and examination functions, applica-
tions should be forwarded for review when originally
filed or as soon thereafter as their content is deter-
mined. To wait until the application is allowable,
defeats the desired security schedule and causes
trouble in clearing date cases due to delays in
processing.

Where a "division date" case is held up by review
processing in Div. 70, and the next normal action
would be allowance, a memorandum should be pre-
pared stating the situation and when the applica-
tion was submitted for review. Such a memorandum
should be delivered to Div. 70 in duplicate, one copy
to serve as a request to expedite the processing, and
the second copy to be forwarded to the Supervisory
Examiner after having been marked by Div. 70 to
show the progress that has been made. This second
copy will serve to explain the weekly report standing
of the affected division. Any further action to be
taken in the case for the purpose of advancing the
division date must be arranged through the Super-
visory Examiner, Such a case may be obtained
from Div. 70 for the purpose of examination. The
examiner in charge of the division requesting an
application must sign a receipt for the application
when it is taken from Div. 70, and his responsibility
for its security and safekeeping will continue until
returned to Div. 70. It must be returned to Div. 70
by 4:30 each day. If the next step in the examining
operation on an application in this category requires
leaving the application with other divisions or
branches of the Office, the application should be re-
turned to Div. 70 with a note indicating the routing
desired so that responsibility for the application may
be properly shown on the records of Div. 70. (Ex-
tracts from Notices of March 15, 1950, and Oct. 9,
1950.)

"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.

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

# 107.01 D-10 Notice

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 non-entry, and the
reasons therefor until the application is released
from the "Secrecy Order."

# 108 "Special Handling" Cases

By agreement between the Commissioner of
Patents and certain Government Agencies,
specified applications of interest to national
security are designated as "Special Handling"
when filed in the Patent Office. While such
applications are not ordinarily immediately
placed under a "Secrecy Order," it is generally
accepted that they are of a super-secret nature.
The Patent Office has agreed to treat such appli-
cations with special safeguards and to conduct
their examination in a way to make their con-
tents known to the minimum number of persons
necessary for their proper treatment. Where
the Agency involved has the inventor, attorney
and assignee (if any) under contract or other
control, security may best be served by not pre-
paring and mailing the formal papers normally
required under the provisions of 35 U. S. C. 42.

# 109 Government Owned "3-Year" Re- sponse Cases and Suspended Action Cases

Government owned "Three Year" (R. S. 4894;
35 U. S. C. 37) applications (see 710.03) and govern-
ment owned suspended action cases (see 709) may
be obtained from Division 70 for the purpose of
examination. The examiner in charge of the divi-
sion requesting an application must sign a receipt
for the application when it is taken from Division 70,
and his responsibility for its security and safekeeping
will continue until eventually returned to Division 70.

These applications may be retained in the exam-
ining division for limited periods provided adequate
lock means are available for their protection during
non-working hours. Where the examining operation
requires the submission of an application in this
category to other divisions or branches of the Office,
the application must be hand-carried to the desired
destination and a signed receipt obtained from a
responsible party. (Extract from Notice of March
15, 1950.)

All applications under this section must be
referred to Division 70 for clearance before
allowance.

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