37 CFR § 5.3 — Prosecution of application under secrecy orders; (MPEP Coverage Index) – BlueIron IP
37 CFR § 5.3 Prosecution of application under secrecy orders;
This page consolidates MPEP guidance interpreting 37 CFR § 5.3, including 25 rules from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only, it is not legal advice.
Summary
This section outlines the procedural aspects of prosecuting patent applications while they are under secrecy orders, ensuring that actions by both the Office and applicants proceed as directed.
What this section covers
- Defines the procedural aspects during a secrecy order for patent application prosecution.
- Focuses on how to proceed with an application under secrecy order, including specific actions and conditions.
Key obligations
- Proceed with prosecution as directed by secrecy order, ensuring all actions comply with the directive.
- Ensure record and search copies are processed before a secrecy order is placed on an international application.
- Comply with USC/CFR directives to ensure proper handling of secrecy order applications.
Practice notes
- Ensure all communications with the Office are marked 'Confidential' during secrecy order periods.
- Avoid premature disclosure of information subject to secrecy orders to prevent compliance issues.
Official MPEP § 5.3 — Prosecution of application under secrecy orders;
Source: USPTOLast Modified: 10/30/2024 08:50:22
5.3 Prosecution of application under secrecy orders; withholding patent.
Unless specifically ordered otherwise, action on the application by the Office and prosecution by the applicant will proceed during the time an application is under secrecy order to the point indicated in this section:
- (a) National applications under secrecy order which come to a final rejection must be appealed or otherwise prosecuted to avoid abandonment. Appeals in such cases must be completed by the applicant but unless otherwise specifically ordered by the Commissioner for Patents will not be set for hearing until the secrecy order is removed.
- (b) An interference or derivation will not be instituted involving a national application under secrecy order. An applicant whose application is under secrecy order may suggest an interference (§ 41.202(a) of this title), but the Office will not act on the request while the application remains under a secrecy order.
- (c) When the national application is found to be in condition for allowance except for the secrecy order the applicant and the agency which caused the secrecy order to be issued will be notified. This notice (which is not a notice of allowance under § 1.311 of this chapter) does not require reply by the applicant and places the national application in a condition of suspension until the secrecy order is removed. When the secrecy order is removed the Patent and Trademark Office will issue a notice of allowance under § 1.311 of this chapter, or take such other action as may then be warranted.
- (d) International applications and international design applications under secrecy order will not be mailed, delivered, or otherwise transmitted to the international authorities or the applicant. International applications under secrecy order will be processed up to the point where, if it were not for the secrecy order, record and search copies would be transmitted to the international authorities or the applicant.
[43 FR 20470, May 11, 1978; amended 43 FR 28479, June 30, 1978; para. (b) amended 53 FR 23736, June 23, 1988, effective Sept. 12, 1988; para. (c) revised, 62 FR 53132, Oct. 10, 1997, effective Dec. 1, 1997; para. (a) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; revised, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004; para. (b) revised, 77 FR 46615, Aug. 6, 2012, effective Sept. 16, 2012; para. (d) revised, 80 FR 17918, Apr. 2, 2015, effective May 13, 2015]
- Examination Procedure
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- Interference Proceedings
- International Design
- Ida Requirements
- Patent Issuance
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- Patent Term
- Patent Term Adjustment
- Pct
- Pct Amendments Article 19
- Pct Filing
| MPEP Section | Rules |
|---|---|
| MPEP § 120 | |
| MPEP § 130 | |
| MPEP § 1832 | |
| MPEP § 2306 | |
| MPEP § 2731 |