100

OCR transcription for search; preserved printed pages are authoritative

# Chapter 100 Secrecy and Access

101 General

102
Information as to Status ef an Application

108
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 preserved
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 filling 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 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 dle of the gatent
are open to inspection by the general public, and copies
may be furnished upon paying the fee therefor, The
fille 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 189 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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Netract from Bale 14) (b) Butgt == Fortid ia
Enla 11(b) abandoned applications are likewies not
come to public tospection, except that if an application
referred to to a United States patent is ches-dated and
is available, it'sany be inspected or copiee obtained by
any percon 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 cahed 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 recorda. (a) Be-
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., 20281. A non-refundable application fee of
$2.00 must accompany each application. Coples of
Form CD-244 are available in the Central Reference
and Records Inspection Facility, Room 2122, Depart-
ment of Commerce Building, Washington, D.C., 20250,
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 Titie 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-

tối moyen the đảng, eni chy prithen ergoatent
submitted by the person seating sobene to the record.
The derleino won reviewy shall be preceptly mando in
writing and communicated to the peroon beckiny acces.
If the derintin is wholly or partly in favor of avall-
ability, the requested record to much extent shall be
made available for inspection ka described in subsec-
tion (a) of this rule. . To the extent that the decision
is adverse to the request, the reasons for the dental
shall be stated."A decision upon review completed as
provided berela 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.O. 652(s) (8).
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 04 (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.

Å "power to inspect" is, in effect, the same
as & "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 filling 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.

## 107.01 "Review" of Applications for Secrecy Order

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.

IN ORDER FOR DESIRED CONTROLS
TO BE EFFECTIVE AGAINST FOR-
EIGN FILING, THESE STEPS MUST BE
TAKEN AT THE TIME THE APPLICA-
TION IS RECEIVED IN THE EXAMIN-
ING GROUP 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
Group 220, Licensing and Review. It is help-
ful if a check mark is made in the margin op-
posite to the part of the specification which is
significant in suggesting security review.

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 Group 220
to the groups directly concerned. The Pri-

mary Examiners are responsible for submitting
all applications within these fields or categories
to Group 220 for review.) When an applica-
tion has been so "reviewed" the Primary Ex.
aminer 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 sit-
uations should be brought to the attention of
Group 220. (For treatment of security mark-
ings see 109.)

Applications in the process of being re-
viewed by Group 220 may be borrowed by the
examiner when reached for action. If applica-
rions are submitted for review as soon after fil-
ing as possible, they will ordinarily be returned
in time for examination purposes. If an ap-
plication is returned having a label affixed to
the file wrapper marked "Submit to Group 220"
(formerly the Patent Security Division) the
application cannot be sent to issue by Examin-
ing Groups until it has been submitted to Group
220 for consideration of processing under Sec-
tion 152 of the Atomic Energy Act (42 U.S.C.
2182) and/or Section 305c of the Space Act (42
U.S.C. 2547). When an Examiner finds an ap-
plication in condition for allowance labeled as
indicated above he should promptly make a
complete interference search in the manner in-
dicated in section 1302.08, prepare and mail a
status letter to applicant and forward the ap-
plication with Form PO-488 to Group 220.
Where an application holding the group date,
in which review is necessary or has not been
completed, is found to be allowable, the situa-
tion should be called to the attention of Group
220. When the security status of the applica-
tion cannot be -promptly decided, Group 220
will report the progress that has been made to
the Group Supervisory Examiner. Any ac-
tion to be taken in the case, for the purpose
of advancing said group date, must be arranged
through the Group Supervisory Examiner.

# 107.02 Prosecution of "Secrecy Or- der" Cases

"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.

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.

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In the situation where one or more conflicting
cases is a "Scerto; 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 not
entered or responded to until such time as the
escrecy 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

Rule 14(e) reads as follows:

"Applications for patents which disclose or which
appear to disclose, or which purport to disclose, in-
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 1854 requires that the
Commissioner of Patents shall notify" the Atomic
Energy Commission of all applications for patent
which, in his opinion, disclose inventions or discov-
erles required to be reported under subsection 151c
which reads as follows:

"Any invention or discovery useful (1) 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.

It is helpful if a check mark is made in the
margin opposite to the part of the specification
which is significant in suggesting that the ap-
plication be reported.

To carry out the responsibilities of the Com-
missioner under the Act, applications must be
inspected promptly when received and those
which appear to relate to Atomic Energy
MUST BE PROMPTLY submitted to Group
220 even though the applications are owned or
prosecuted by the United States or, indeed, the
Atomic Energy Commission. In considering
applications under the terms of Rule 14(c), the
relation of the subject matter to national se-
curity 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). (Basis:
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 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
Ofice 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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