100

OCR transcription for search; preserved printed pages are authoritative

# Chapter 100 Secrecy and Access

101

General

102

103

Information as to Status of an Application
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

108.01
Rights of Assignee of Part Interest
Special Security Cases

107
"Secrecy Order" Cases

107.02

107.01
"Review" of application for Secrecy
Order
Prosecution of "Secrecy Order" Cases

108

Applications relating to Atomic Energy

109
Security Markings

## 101 General

Extract from Rule 14. Applications 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.

Examiners, while holding interviews with at-
torneys 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,
relying on the filing date of said prior appli-
cation. (B) an application referred to in a
U. S. patent. Such information can be had on
written request 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 pro-
curement of copies.

Inasmuch as the Post Office address is neces-
sary for the complete identification of the peti-
tioner, it should always be included.

Whenever a patent relies upon the filing date
of an earlier application (See 35 U. S. C. 120),
the public is entitled to see the portion of the
earlier application that relates to the common
subject matter, and also what prosecution, if
any, was had in the earlier application of
subject matter claimed in the patent. The
interested party may file a petition to the Com-
missioner for access.

The petition may be filed either with proof
of service of a copy upon the attorney of record,
if known, in the application to which access is
sought, or may be filed in duplicate, in which
case the duplicate copy is sent by the Law Ex-
aminer to the attorney or owner of the applica-
tion, who is given a limited period, as a week
or ten days, within which to state any objection
he may have to the granting of the petition. If
no objection is raised, the petition is approved
by the Law Examiner; otherwise a decision is
rendered by the Commissioner. If there is no
objection the petitioner is permitted to see the
entire parent application. Otherwise, the
petitioner is allowed to order a copy of only
that portion of the parent application that
relates to the common subject matter. A sepa-
rate petition should be filed for each application
to which access is desired, or sufficient extra
copies provided so there may be one for place-
ment in each application file, if the petition be
granted, and one for service upon each attorney
of record, if, as sometimes happens, the same
applicant has different attorneys in different of
his applications. Each petition should show
not only why access is desired, but also why
petitioner believes he is entitled to access.

Upon publication of an abstract, the entire
application becomes available to the public for
inspection and obtaining copies. See 711.06.

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.

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## 104 Power to Inspect Application

A "power to inspect" is, in effect, the same as
a "power to inspect and make copies."

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, identifying 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 permis-
sion to inspect is granted. Permission to inspect
may also be granted by the Patent Reference
Branch, the Manuscript and Lithographic Branch
and the Issue and Gazette Branch.

Power to inspect or make copies presented at the
Patent Reference Branch, the Manuscript and
Lithographic Branch, and the Issue and Gazette
Branch must be approved in writing by the head of
the respective organizational unit. The assistant
head of the Issue and Gazette Branch is authorized
to act for the head of that Branch in his absence
in approving powers to inspect. (Extract from Com-
missioner's Administrative Order No. 10, August 28,
1952.)

The authority of the Examiner to approve
powers to inspect extends to the period between
allowance and issue.

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.

## 105 Disbarred Attorney Cannot Inspect

Patent Office employees are forbidden to hold
either oral or written communication with a
Rev. 3, June 1957

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.

## 107 "Secrecy Order" Cases

Title 35, United States Code, section 181
provides, in part, that any invention in which
the Government does not have a property in-
terest, and whose publication or disclosure by
the granting of a patent might, in the opinion
of the Commissioner, be detrimental to the na-
tional security, shall be made available to the
defense agencies. Upon notification by the de-
fense agencies, the Commissioner 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 inter-
ested Government agency determines whether
to notify the Commissioner to keep the inven-
tion secret.

35 U. S. C. 184, Filing of application in foreign coun-
try. Except when authorized by a license obtained
from the Commissioner a person shall not file or cause
or authorize to be filed in any foreign country prior to
six months after filing in the United States an applica-
tion for patent or for the registration of a utility model,
industrial design, or model in respect of an invention
made in this country. A license shall not be granted
with respect to an invention subject to an order issued
by the Commissioner pursuant to section 181 of this
title without the concurrence of the head of the depart-

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ments and the chief officers of the agencies who caused
the order to be issued. The license may be granted
retroactively where an application has been inad-
vertently filed abroad and the application does not dis-
close an invention within the scope of section 181 of
this title.

The term "application" when used in this chapter
includes applications and any modifications, amend-
ments, or supplements thereto, or divisions thereof.

### 107.01 "Review" of Applications for Secrecy Order

Under 35 U. S. C. 181 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
FILING, THESE STEPS MUST BETAKEN
AT THE TIME THE APPLICATION IS
RECEIVED IN THE EXAMINING DIVI-
SION AS A NEW APPLICATION. See
Executive Examiner's Notice of Feb. 5, 1952.

It is the responsibility of the Primary Ex-
aminer to see that all applications are screened
for this purpose and that the applications se-
lected for "review" are promptly forwarded 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 35
U. S. C. 181 in the Patent Office. Unusual
situations should be brought to the attention
of Division 70. (For treatment of security
markings see 109.)

Applications in the process of being reviewed
by Division 70 may be borrowed by the exam-
iner 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 is necessary or 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 Super-
visory Examiner. 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, and an appeal, if filed, must
be completed by the applicant, such appeal
will not be set for hearing by the Board of
Appeals until the secrecy order is removed, un-
less specifically ordered by the Commissioner.
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 re-
jection in an ordinary case; i. e., they may be
entered if found free from objection; other-
wise they are denied admission. The applicant
will not ordinarily be advised of their nonentry,
or the reasons therefor until the application is
released from the "Secrecy Order."

## 108 Applications Relating to Atomic Energy

Rule 14 (c) reads as follows:

"Applications for patents which disclose or which
appear to disclose, or which purport to disclose,
inventions or discoveries relating to atomic energy
are reported to the Atomic Energy Commis-
sion and the Commission will be given access
to such applications, but such reporting does not
constitute a determination that the subject matter of
each application so reported is in fact useful or an
invention or discovery or that such application in fact
discloses subject matter in categories specified by secs.
151 (c) and 151 (d) of the Atomic Energy Act of 1954,
68 Stat. 919; 42 U. S. C. 2181."

The Atomic Energy Act of 1954 requires that the
Commissioner of Patents shall notify the Atomic
Energy Commission of all applications for patent

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which, in his opinion, disclose inventions or dis-
coveries required to be reported under subsection
151c which reads as follows:

"Any invention or discovery useful (1) in the
production or utilization of special nuclear ma-
terial or atomic energy.
»

The term "atomic energy" is defined as all forms
of energy released in the course of nuclear fission or
nuclear transformation.

To carry out the above provisions it is essential
that all applications concerned be promptly sub-
mitted to Division 70. In considering applications
under the terms of Rule 14 (c) the relation of the
subject matter to national security under Sec. 107.01
is not a limiting factor. Even applications using a
well-known radioactive source for any purpose or
which disclose inventions having special relation to
atomic devices should be submitted to Division 70.

See 706.03 (b). (Notice of April 25, 1956.)

### 109 Security Markings

Under Executive Order 10,501, 18 Federal
Register Number 220, page 7049, standards are
prescribed for the marking, handling, and care
of official information which requires safe-
guarding 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," or "Con-
fidential," must be promptly referred to Divi-
sion 70 for clarification or security treatment.
Under no circumstances can any such applica-
tion, 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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