MPEP § 130 — Examination of Secrecy Order Cases (Annotated Rules)
§130 Examination of Secrecy Order Cases
This page consolidates and annotates all enforceable requirements under MPEP § 130, including statutory authority, regulatory rules, examiner guidance, and practice notes. It is provided as guidance, with links to the ground truth sources. This is information only, it is not legal advice.
Examination of Secrecy Order Cases
This section addresses Examination of Secrecy Order Cases. Primary authority: 37 CFR 5.1(d). Contains: 2 requirements.
Key Rules
Statutory Authority for Examination
Estoppel After Judgment
In case of a final rejection, while such action must be properly replied 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 Patent Trial and Appeal Board until the Secrecy Order is removed, unless specifically ordered by the Commissioner for Patents.
Notice of Allowance Form and Content
When a Secrecy Order case is in condition for allowance, a notice of allowability (Form D-10) is issued, thus closing the prosecution. See 37 CFR 5.3(c). Any amendments received thereafter are not entered or responded to until such time as the Secrecy Order is rescinded.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.
Secrecy Order Imposition
Pursuant to 37 CFR 5.1(e), a national security classified patent application will not be allowed until the application is declassified and any Secrecy Order pursuant to 37 CFR 5.2(a) has been rescinded.
Citations
| Primary topic | Citation |
|---|---|
| Statutory Authority for Examination | 37 CFR § 5.1(d) |
| Secrecy Order Imposition | 37 CFR § 5.1(e) |
| Secrecy Order Imposition Statutory Authority for Examination | 37 CFR § 5.2(a) |
| Statutory Authority for Examination | 37 CFR § 5.3 |
| Notice of Allowance Form and Content Statutory Authority for Examination | 37 CFR § 5.3(c) |
| Statutory Authority for Examination | MPEP § 2306 |
Source Text from USPTO’s MPEP
This is an exact copy of the MPEP from the USPTO. It is here for your reference to see the section in context.
Official MPEP § 130 — Examination of Secrecy Order Cases
Source: USPTO130 Examination of Secrecy Order Cases [R-11.2013]
All applications in which a Secrecy Order has been imposed are examined in a secure location by examiners possessing national security clearances under the control of Licensing and Review. If the Order is imposed subsequent to the docketing of an application in another TC, the application will be transferred to an examiner designated by Licensing and Review.
Secrecy Order cases are examined for patentability as in other cases, but will not be passed to issue; nor will an interference or derivation be instituted where one or more of the conflicting cases is classified or under Secrecy Order. See 37 CFR 5.3 and MPEP § 2306.
In case of a final rejection, while such action must be properly replied 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 Patent Trial and Appeal Board until the Secrecy Order is removed, unless specifically ordered by the Commissioner for Patents.
When a Secrecy Order case is in condition for allowance, a notice of allowability (Form D-10) is issued, thus closing the prosecution. See 37 CFR 5.3(c). 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.
Due to the additional administrative burdens associated with handling papers in Secrecy Order cases, the full statutory period for reply will ordinarily be set for all Office actions issued on such cases.
Sometimes applications bearing national security markings but no Secrecy Order come up for examination. In this case, the examiner should require the applicant to seek imposition of a Secrecy Order or authority to cancel the markings. This should preferably be done with the first action and, in any event, prior to final disposition of the application. Pursuant to 37 CFR 5.1(d), if no Secrecy Order has issued in a national security classified patent application, the Office will set a time period within which the applicant must take one of the following three actions in order to prevent abandonment of the application:
- (A) obtain a Secrecy Order;
- (B) declassify the application; or
- (C) submit evidence of a good faith effort to obtain a Secrecy Order pursuant to 37 CFR 5.2(a).
Pursuant to 37 CFR 5.1(e), a national security classified patent application will not be allowed until the application is declassified and any Secrecy Order pursuant to 37 CFR 5.2(a) has been rescinded.