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

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

109
Security Markings

## 101 General [R-17]

Extract from Rule 14. Patent applications preserred
in secrecy. (a) Except as provided in Rule 11(b)
pending patent 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, not
will access be given to or copies furnished of any pend-
ing 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
attorneys and applicants, should be careful to
prevent exposures of files and drawings of
other applicants.

Extreme care should be taken to prevent
inadvertent disclosure of the filing date or se-
rial number of any application filed by another
party. This applies not only to Office actions
but also to notes (usually in pencil) in the
file wrapper.

## 102 Information as to Status of an Application

Information will be given as to the pendency.
abandonment or patent number of any U.S. ap-
plication identified by Serial Number in a U.S.
or foreign patent. A written request for such
information must be made, identifying the
source (the U.S. or foreign patent) by country
and number. See 203.08.

## 103 Right of Public to Inspect Patent Files and Some Application Files [R-17]

Rule 11. Files open to the public. (a) After a
patent has been issued, the specification, drawings, and

all papers relating to the case in the ale of the patent
are open to inspection by the general public, and coples
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.

(b) Applications in which the Office has accepted a
request filed under Rule 139 are open to inspection by
the general public, and copies may be furnished upon
paying the fee therefor.

Whenever a patent relies upon the filing date
of an earlier but still pending application, 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 Commissioner for
access.

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

The petition may be filed either with proof
of service of a copy upon the attorney of rec-
ord, 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 Examiner to the attorney or owner of the
application, 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 peti-
tion is approved by the Law Examiner; other- -
wise a decision is rendered by the Commis-
sioner. If there is no objection the petitioner
is permitted to see the entire parent applica-
tion. 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 separate petition should be filed for
each application to which access is desired,
or sufficient extra copies provided so there may
be one for placement 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 at-
torneys 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.

The entire application, an abstract or an ab-
breviature of which has been published, is avail-
able to the public for inspection and obtaining
copies, see 711.06.

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Extract from Rule 14. (b) Except as provided in
Rule 11(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, without 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 preservation. Abandoned appli-
cations will not be returned.

Rule 14(d) authorizes publication of deci-
sions of the Board of Appeals or of the Com-
missioner, in abandoned applications, under
certain conditions.

Rule 15. Requests for identifiable records. (a) Re-
quests for records not disclosed to the public as part of
the regular informational activity of the Patent Office
and which are not otherwise dealt with in these rules
may be made by completing Form CD-244, "Application
to Inspect Department Records," and submitting this
form, in person or by mail, to the Commissioner of
Patents, Department of Commerce Building, Washing-
ton. D.C., 20231. A non-refundable application fee of
$2.00 must accompany each application. Copies of
Form CD-244 are available in the Central Reference
and Records Inspection Facility, Room 2122, Depart-
ment of Commerce Building, Washington, D.C., 20230,
the search room of the Patent Reference Branch of the
Patent Office, the search room of the Trademark Exam-
ining Operation, and in many public information offices
and field offices of the Department of Commerce. If
the requested record is identifiable, the request will be
reviewed by the appropriate official authorized to make
an initial determination of the availability of the rec-
ord. If it is determined that the material is not to be
made available to the requesting person, said person
shall be notified in writing of that fact and the reasons
why the record will not be disclosed. If the record is
to be made available, inspection will be permitted in the
appropriate Patent Office search room. Fees for copies
of records and for searches and related services are
payable in accordance with the schedule of fees and
charges established in Section 4.8 of Title 15, Code of
Federal Regulations.

(b) Any person whose application to inspect a record
has been refused may request a reconsideration of the
initial denial by completing and submitting the appro-
priate section of the Form CD-244. The request for
reconsideration should be made within 30 days of the
date of the original denial. In submitting such request
the party should include any written argument he
desires to support his belief that the record requested
should be made available. No personal appearance,
oral argument, or hearing shall be permitted. The
decision upon such request shall be made by the Com-
missioner of Patents, and shall be based upon the orig-

inal request, the denial, and any written argument
submitted by the person seeking access to the record.
The decision upon review shall be promptly made in
writing and communicated to the person seeking access.
If the decision is wholly or partly in favor of avail-
ability, the requested record to such extent shall be
made available for inspection as described in subsec-
tion (a) of this rule. . To the extent that the decision
is adverse to the request, the reasons for the denial
shall be stated. A decision upon review completed as
provided herein shall constitute the final decision and
action of the Patent Office as to the availability of a
requested record, except as may be required by court
proceedings initiated pursuant to 5 U.S.C. 552(a) (3).
Reconsiderations resulting in final decisions as pre-
scribed herein shall be indexed and made available in
the search room of the Patent Reference Branch.

(c) Procedures applicable in the event of a subpoena,
order, or other compulsory process or demand of a court
or other authority shall be those set forth in Section 7
of Department Order 64 (32 F.R. 9734, July 4, 1967).

## 104 Power to Inspect Application [R-17]

No person but the applicant (any one of
joint applicants), applicant's legal representa-
tive, the assignee whose assignment is of record,
or the attorney, agent or associate attorney of
record will be permitted to have access to the
file of any pending application, except as pro-
vided for under Rule 11 (b) or under the inter-
ference rules, unless written authority from one
of the above indicated parties, identifying the
application to be inspected, is made of record,
or upon the written order of the Commissioner,
which will also become a part of the record
of the case.

Approval by the Primary Examiner of a
power to inspect is not required. The Clerk of
the Group to which the application is assigned
ascertains that the power is properly signed by
one of the above indicated parties, and if ac-
ceptable, enters it into the file. If the power to
inspect is unacceptable, notification of non-entry
is written by the Clerk to the person who signed
the power.

When a power to inspect is received while a
file is under the jurisdiction of a Service
Branch, such as the Patent Reference Branch,
the Document Services Branch, the Service
Branch of the Board of Appeals, and the Issue
and Gazette Branch, the question of permission
to inspect is decided by the Head of the Branch
who, if he approves, indicates the approval
directly on the power.

Power to inspect may be granted when a
duplicate copy of a filed power to inspect is

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hand delivered. The copy with indication of
approval is placed in the file.

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

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, recog-
nized 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 an
attorney who has been suspended or excluded
from practice regarding an application unless
it be one in which said attorney is the applicant.
Power to inspect given to such an attorney will
not be accepted.

## 106 Control of Inspection by Assignee

The assignee of the entire interest in an ap-
plication 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 request to that effect. Even when such
request is made, the applicant may be permit-
ted to inspect the case on sufficient showing
why such inspection 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 exclu-
sion 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

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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 pe-
riod as the national interest requires. Where
the Government has a property interest, the
interested Government agency determines
whether to notify the Commissioner to keep the
invention 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-
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 inadver-
tently 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.

Since May 3, 1965, all licenses granted by the
Commissioner of Patents to file patent applica-
tions in foreign countries have been made of
record in the application to which they cor-
respond. The granted request for a license and
the license are given paper numbers and en-
dorsed on the file jacket and on the Serial Regis-
ter Card. Requests for licenses which are not
approved are neither recorded nor placed in the
application file wrapper. [R-18]

# 107.01 "Review" of Applications for Secrecy Order [R-18]

Under 35 U.S.C. 181 the obligation is di-
rectly 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.

All new applications received in the Patent
Office are now being screened by Group 220
personnel to determine which applications
should be made available for review or treated
under the Atomic Energy and Space Acts for
property interests.

All applications that have been screened by
Group 220 will be stamped "LICENSING &
REVIEW" inside the file wrapper. This
stamp simply indicates that the application has
been initially screened and is not to be con-

sidered as a conclusive indication of the security
status of the application or as an indication that
a license for foreign filing will be granted.

All papers subsequently filed must be in-
spected by the Examiner to determine whether
matter of an obvious defense interest which
requires a security review has been introduced
into the application. In such applications for-
warded to the Licensing and Review Section of
Group 220, it is helpful if a check mark is placed
in the margin opposite to the part which is
significant in suggesting security review.

Applications in Group 220 for the review
thereof by the appropriate defense agency may
be borrowed by the examiner when reached for
action. Allowable applications requiring con-
sideration for processing under Section 152 of
the Atomic Energy Act (42 U.S.C. 2182) and/or
Section 305c of the Space Act (42 U.S.C. 2457c)
are processed to issue, including counting of the
issue, and forwarded through Group 220 to the
Issue and Gazette Branch. When the security
status of the application cannot be promptly
decided, Group 220 will report the progress that
has been made to the Group Director. Any ac-
tion to be taken in the case, for the purpose
of advancing said group date, must be arranged
through the Group Director.

# 107.02 Prosecution of "Secrecy Or- der" Cases [R-18]

"Secrecy Order" Cases are examined as in
other cases, but may not be passed for issue;
nor will an interference be declared where one
or more of the conflicting cases is secret. See
section 1111.04.

In case of a final rejection, while such action
must be properly responded to, and an appeal,
if filed, must be completed by the applicant to
prevent abandonment, such appeal will not be
set for hearing by the Board of Appeals until
the secrecy order is removed, unless specifically
ordered by the Commissioner.

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 not
entered or responded to until such time as the
secrecy order is rescinded. At such time
amendments which are free from objection will
be entered; otherwise they are denied entry.

# 108 Applications Relating to Atomic Energy [R-18]

Rule 14 (c) reads as follows:

"Applications for patents which disclose or which
appear to disclose, or which purport to disclose, in-

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ventions or discoveries relating to atomic energy are
reported to the Atomic Energy Commission 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 which, in his opinion, disclose in-
ventions or discoveries required to be reported
under subsection 151c (42 U.S.C. 2181c) which
reads in part as follows:

". .. any invention or discovery useful in the pro-
duction or utilization of special nuclear material or
atomic energy. . . . "

The term "atomic energy" is defined as all forms
of energy released in the course of nuclear fission
or nuclear transformation (42 U.S.C. 2014c).

All applications received in the Patent Office
are sent to Licensing and Review for screening
by Group 220 personnel, under Rule 14(c), in
order for the Commissioner to fulfill his respon-
sibilities under Section 151(d) (42 U.S.C.
2181d) of the Atomic Energy Act. Papers sub-
sequently added must be inspected promptly by
the Examiner when received to determine
whether the application has been amended to
relate to atomic energy and those so related
must be promptly forwarded to Licensing and
Review.

When applications are forwarded to Group
220 for consideration of the above requirements,
it is helpful if a check mark is made in the
margin opposite to the part of the paper which
is significant in suggesting that the application
be reported.

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
significant factor. EVEN applications using a
well-known radioactive source for any purpose
or which disclose inventions having special rela-
tion to atomic energy MUST BE SUBMIT-
TED TO Group 220. See 706.03(b).

## 109 Security Markings

Under Executive Order 10,501, 18 Federal
Register Number 220, page 7049, standards are
prescribed for the marketing, handling, and
care of official information which requires
safeguarding 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 Group
220 for clarification or security treatment. Un-
der 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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