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 FHles

104
Power to Inspect Application

105
106

Disbarred Attorney Cannot Inspect
Control of Inspection by Assignee

106.01
Rights of Assignee of Part Interest
Special Security Cases

107
"Secrecy Order" Cases

107.01
"Review" of application for Secrecy
Order
107.02
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 particu-
lar case before it, or the subject matter of any par-
ticular application, nor will access be given to or
copies furnished of any pending application or pa-
pers 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. (Basis: Notice of June 12,
1918.)

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

The Office will give information to any
member 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 Pat-
ents.

## 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.

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.

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

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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 of which
has been published, is 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.

## 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 at-
torney, identifying the application to be in-
spected, is filed in the case to become a part
of the record thereof, or upon the written or-
der of the Commissioner, which will also be-
come a part of the record of the case. (Basis:
Order No. 1271.)

Every power to inspect must be approved in
writing and dated by the Examiner in charge
of the Division to which the application is
assigned before permission to inspect is grant-
ed. Permission to inspect may also be granted
by the Patent Reference Branch, the Docu-
ment Services Branch, the Service Section of
the Board of Appeals, the Docket Branch and
the Issue and Gazette Branch.

Either of joint applicants can grant a power
to inspect to a third party. (Basis: Commis-
sioner's Administrative Order No. 10, August
28, 1952.)

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

The authority of the Examiner to approve
powers to inspect extends to the period be-
tween allowance and issue.

Where an applicant relied upon his appli-
cation as a means to interfere with a competi-
tor's business or customers, permission to in-
spect the application may be given the com-
petitor by the Commissioner. (Ex Parte Bon-
nie-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 a disbarred attorney regarding an appli-
cation 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 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
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

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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.

# 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 DIVISION AS A NEW APPLICA-
TION. 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
the Patent Security Division.

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 the Patent
Security Division to the divisions directly
concerned. The Primary Examiners are re-
sponsible for submitting all applications within
these fields or categories to the Patent Security
Division for review. When an application has
been so "reviewed" the Primary Examiner is
relieved of responsibility in the event any pro-
test 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
the Patent Security Division. (For treatment
of security markings see 109.)

Applications in the process of being re-
viewed by the Patent Security Division may
be borrowed by the examiner 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 application holding the
division date, in which review is necessary or
has not been completed, is found to be allow-
able, the situation should be called to the at-
tention of the Patent Security Division. When
the security status of the application cannot
be promptly decided, the Patent Security Di-
vision will report the progress that has been
made to the Supervisory Examiner. Any ac-
tion to be taken in the case, for the purpose
of advancing said division date, must be ar-
ranged through the 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 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 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

Rule 14(c) 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

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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 inventions or discov-
eries 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.

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 the
Patent Security Division. In considering ap-
plications 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 THE PATENT SECURITY DI-
VISION. 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
Office bearing words such as "Secret," or "Con-
fidential," must be promptly referred to the
Patent Security Division for clarification or
security treatment. Under no circumstances
can any such application, drawing, exhibit, or
other paper be placed in public records, such
as the Patented Files, until all security mark-
ings have been considered and declassified or
otherwise explained.

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