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OCR transcription for search; preserved printed pages are authoritative

# Section 2. SECRECY

## 2-1. General

-1-1. "Secret" Case
-1-2.
D-10 Notice

-1-3. "Special Handling" Case

-1-4. Request for Secrecy

-2-1. Right to Inspect an Application

-2-2. Power to Inspect

-2-3. Disbarred Attorney Cannot Inspect

-2-4. Control of Inspection by Assignee

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### 2 . SECRECY

#### 2-1. General

Rule 3.4 Applications preserved in
secrecy. Pending applications are preserved
in secrecy. No information will be given by
the Office respecting the filing by any par-
ticular person of an application for a patent,
the pendency of any particular case before it,
or the subject matter of any particular appli-
cation, nor will access be given to or copies
furnished of any pending application or papers
relating thereto, without authority of the
applicant, or his attorney or agent or assig. je
if any, unless it shall be necessary to the
proper conduct of business before the Office
or as provided by these rules.

Abandoned applications are likewise not
open to public inspection, except that if an
application referred to in an issued United
States patent is abandoned, it may be inspected,
if not destroyed, by any person or copies ob-
tained without notice to the applicant on
request in writing. 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 applica-
tions will not be returned ..

Decisions of the Commissioner in any
application, and of the Board of Appeals in
abandoned applications, may be published or
made available for inspection or publication
in the Commissioner's discretion

Rula 22 0 Niice of reissue application.
When an application for a reissue is filed,
there will be placed in the file of the original
patent a nouler ciali - that an application for
reissue has been filed, giving its serial num-
ber and filing date When the reissue is granted
or the reissue application is otherwise termi-
nated the fart will be added to the notice in
the file of the prigioni patent.

A matter of the Village of a reissue appli-
cation will be adrained in the Official

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Gazette. Reissue applications are not pre-
served in secrecy in the same manner as orig-
inal applications, and access will ordinarily
be granted on request in writing.

Some Examiners, while holding interviews with attor-
neys and applicants, are careless in permitting exposures of
files and drawings in such a way as to be embarrassing, in-
asmuch as it is practically impossible to avoid obtaining
information not desired and not intended to be conveyed.

Special care should be exercised to keep drawings and
files out of view on such occasions .

2-1-1.
"Secret" Case

The Act of October 6, 1917 and amended Act of July 1,
1940, 54 Stat. 710, provide that whenever the publication
or disclosure of an invention 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
national interest requires .

A "secret" case is one which is adjudged to be for an
invention whose publication might be detrimental to the pub-
lic safety or defense. It is examined as in other cases, but
may not be passed for issue; nor does an interference involv-
ing one or more secret cases proceed beyond the filing 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 conserve his rights would have to
go into open court with his case.

2-1-2.
D-10 Notice

When a secret case is in condition for allowance the
D-10 notice 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 should be advised of
their entry or non-entry, and in the latter case the reasons
therefor.

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2-1-3.
"Special Handling" Case

During the war there were filed by one of the Govern-
ment Agencies certain applications for patents on inventions
relating to the prosecution of the war. which at the request
of the agency were not placed under secrecy orders, but were
handled in such manner as to preclude their coming to the
general knowledge of the examining corps or of the division
to which such case was assigned Extra precautions were
taken for safeguarding them in the Office. These cases be-
came known as "Special Handling" or super-secret cases.

They are acted on by the Examiner much as "secret"
cases are except in the matter of their being passed for
issue.

In a "special handling" case and a Government-owned
three-year case the Commissioner has approved (Apr. 3, 1946)
the practice of informally notifying the agency involved of
the proposed allowance of the case. Such notification may
be given either directly or through the War Division.

If delay of the issue of the patent is desired in
the interest of security or for other reason, appropriate
action, as placing the case under secrecy order, or invoking
in a Government-owned case the three-year proviso of R.S.
4894, may be taken.

##### 2-1-4. Request for Secrecy and Recording Assignments of Government-Owned Cases

With applications in which request is made for secrecy,
there must be an assignment to the Government of the United
States to comply with the provisions of Sec. 4894 R.S. This
assignment will be recorded and placed in a volume provided
exclusively for assignments filed in connection with these
cases. On the file of these applications, the entry will be
made: "U.S. Government. Assignment "

The canta on the index under the "Assignee, " "Assignor"
and "Inventor" headings gilt give the name of the inventor
and the assigned as the Parated States Government as repre-
sented by Secretary of
" and identify the appli-
cation by serial number" The Tiger will give this informa-
tion and nothing more and will refe . by page to the volume
in which the assignment has been placed This volume will
under no circumstances be permitted to be examined by any one
except upon the written authority of the head of the depart.
ment or independent burere to which the application is assigned,
and this written authority must be approved by the Commissioner
of Patents. The letter of authority will be retained by Cho
Assignment Branch as authority for the inspection of the
assignment Upon the presentation of the proper authority

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as above indicated, the authorized assignment only will be
shown to the party presenting the letter, and the inspection
must take place in the presence of the Chief or the Assistant
Chief of the Assignment Branch. No other assignment except
the one specified may be examined .

Other assignments to the Government of the United
States and assignments in cases placed under the provisions
of Sec. 4894 where no request for secrecy is made will be
recorded in the regular way .

All requests for secrecy will be sent marked "Atten-
tion of the Solicitor" and will be forwarded by him to the
Assignment Branch. The assignments will be returned by the
Solicitor to the sender.

Upon the removal of the application from the secrecy
provision or when the patent issues, the assignment will be
recorded in the regular way.

2-2-1.
Right to Inspect An Application

Any member of the public may inspect :

(1) a patented file,

(2) the file of any terminated interference that in-
volved a patent or an application which matured
into a patent,

(3) ordinarily a reissue application on request in
writing (Rule 22.9) .

The Office will give information to any member of the
public as to the present status of an application in the mat-
ter of its being patented or abandoned where that application
19 :

(1) a prior application of which a patented applica-
tion was a continuation or division,

(2) an application referred to in a patent.

Such information can be had on application to the Docket
Branch.

A reference in a divisional application to the parent
caso makes the latter a document relating to the patent issued
on the divisional case. As such, the parent is opon to in-
spection by the public, even though still pending before the
Office, since the public is entitled to see what prosecution,
if any, of the subject matter of the patent claims was had in
the parent case, and to ascertain whether the patent is en-
titled to the filing date of the earlier case.

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Thus where a reference patent which purports to be
n continuation, a continuation in -part or a division of an
earlier application is to be overcome under Rule 18.1 ante-
dated under Rule 23 4 the applicant has a right to inspect
the earlier case to determine for himself whether its dis-
closure entitled the Jater case to the relationship which
it claims to the earlier case. In such a situation, the
usual procedure is to file a petition in duplicate to the
Commissioner for access to the parent case . The duplicate
copy is sent by the Law Examiner to the owner of the parent
case who is given a limited period, such as 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
O.K.'d by the Law Examiner, otherwise a decision is rendered
by the Commissioner.

The assignment records of the Office are open to pub-
lic inspection; and to this extent pending onses that are
assigned are removed from the protection of the rule of
secrecy so far as concerns their serial number, filing date
and title, if these data are all given in the assignment
papers The Office will accept as sufficient identification
of a case for the assignment records the filing date of the
application and the date of execution of the oath.

Files of cases carried to the courts, either by
appeal to the Court of Customs and Patent Appeals or by suit
in equity in the District Court for the District of Columbia,
are not opened by the Patent Office to the public ..

In the case of an appeal to the Court of Customs and
Patent Appeals, a transcript of the record must be filed
with the court within the specified 40-day period following
the decision of the Board of Appeals The decision of the
court is published: but unless the application becomes a
patent, the public is not given access to the application
file itself. Since i transcript of the application becomes
a part of the court record it may of course, be Inspected
by anyone.

Where relief from the adverse decision of the Patent
Office is sought ty way of a ani, in equity the applicant
is required to furnish the sort a certified copy of the file
wrapper and sweets at the same af the trial If the suit
is dismissed tepare coming to that, no disclosure of the
application to the judge necessarily results from the filing
of the suit. Dolike an appeal to the U S Court of Customs
and Patent Appeals the Shape of a suit in equity does not
require the menedrate Eiling of a transcript of the applica-
tion. The complaint is open to spe public.

Files subpoenaed by what may be sent to the court
in care of a Patent Office umprazer along with a certified
copy, under aufrelation what the copy be retained by the

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court and the original brought back to the Office by said
employee.

2-2-2.
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,
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.

Every power to inspect must be approved in writing by
the Examiner in charge of the division to which the applica-
tion is classified before permission to inspect is granted,
with the exception of the Attorneys' and Record Room and the
Manuscript and Lithographic Branch ..

Power to inspect or to make copies presented at the
Attorneys' and Record Room or to the Manuscript and Litho-
graphic Branch must be approved in writing by the head of the
Attorneys' and Record Room or the Manuscript and Lithographic
Branch, both of whom are hereby authorized to permit inspec-
tion or supply copies to authorized persons ..

Where an applicant uses his application as a means to
interfere with a competitor's business or customers, permis-
sion to inspect the application may be given the competitor
by the Commissioner.

An unrestricted power to inspect given by an applicant
is, under existing practice, recognized as good until and un-
less 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 Commissioner under
the conditions above stated, 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.

2-2-3.
Disbarred Attorney Cannot Inspect

Patent Office employees are forbidden to hold either
oral or written communication with a disbarred attorney re-
garding 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

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##### 2-2-4. Control of Inspection by Assignee

The assignee of the entire interest in an application
may intervene in the prosecution of the case, appointing an
attorney of his own choice. Such intervention, however,
does not exclude the inventor from access to the application
to see that it is being properly prosecuted, unless the
assignee makes specific requests to that effect. Even where
such request is made, the applicant may be permitted to
inspect the case on sufficient showing why such inspection
is necessary to conserve his rights.