Q: What is the purpose of reviewing patent applications for national security and property rights issues?

All provisional applications filed under 35 U.S.C. 111(b) , nonprovisional applications filed under 35 U.S.C. 111(a) , international applications filed under the PCT, and international design applications filed under the Hague Agreement are reviewed by the USPTO for three main purposes: To determine if a foreign filing license can be granted under 35 U.S.C. 184 To identify inventions in which the Department of Energy (DOE) or NASA might have property rights To determine if the application contains subject matter detrimental to national security that warrants a secrecy order under 35 U.S.C. 181

Question 1

What is the purpose of reviewing patent applications for national security and property rights issues?

Accepted Answer

All provisional applications filed under 35 U.S.C. 111(b), nonprovisional applications filed under 35 U.S.C. 111(a), international applications filed under the PCT, and international design applications filed under the Hague Agreement are reviewed by the USPTO for three main purposes:

To determine if a foreign filing license can be granted under 35 U.S.C. 184
To identify inventions in which the Department of Energy (DOE) or NASA might have property rights
To determine if the application contains subject matter detrimental to national security that warrants a secrecy order under 35 U.S.C. 181

Question 2

What is the process for reviewing a refusal to grant a filing date for a patent application?

Accepted Answer

If an applicant disagrees with the USPTO's refusal to grant a filing date for their patent application, they can request a review through the following process:

File a petition to the USPTO, accompanied by the required petition fee
Provide arguments and evidence supporting why the application should be granted the desired filing date
If alleging no defect exists, include a request for a refund of the petition fee

The MPEP states: Any review of the refusal to grant a filing date as of the date of deposit of the application would be by way of petition, accompanied by the petition fee (37 CFR 1.17(f)). Petitioner should provide any arguments that he or she has that the items noted were not missing or that a filing date should be assigned in the absence of such items if they are believed to be unnecessary.

Petitions relating to filing dates are decided by the Office of the Deputy Commissioner for Patent Examination Policy. The petition should be marked to the attention of the Office of Petitions.

It's important to act promptly if you believe a filing date has been incorrectly refused, as the filing date can have significant implications for patent rights.

For more information on patent application review, visit: patent application review.

Question 3

What is the difference between a patentability report and a regular patent examination?

Accepted Answer

The main differences between a patentability report and a regular patent examination are:

Scope: A patentability report focuses on specific claims or aspects of an invention, while a regular examination covers the entire application.
Examiner Involvement: Patentability reports involve multiple examiners, whereas regular examinations are typically conducted by a single examiner.
Purpose: Reports are used to gather specialized input, while regular examinations determine overall patentability.
Output: A patentability report is an internal memorandum, not a direct communication with the applicant.

According to MPEP 705, "The primary examiner may incorporate the substance of the report in an Office action," indicating that the report's findings become part of the regular examination process.

To learn more:

Question 4

How does the USPTO handle actions by different examiners on the same application?

Accepted Answer

The USPTO has specific guidelines for handling actions by different examiners on the same patent application. According to MPEP 706.04:

"Full faith and credit should be given to the search and action of a previous examiner unless there is a clear error in the previous action or knowledge of other prior art."

This means that:

Subsequent examiners should generally respect and maintain the decisions of previous examiners
A new examiner should not take an entirely new approach or attempt to reorient the point of view without justification
Making a new search is discouraged unless there's a specific reason to do so

This approach promotes consistency in the examination process and respects the work of previous examiners, while still allowing for corrections when clear errors or new information come to light.

To learn more:

Patent Law FAQ

Here’s the complete FAQ:

MPEP 115-Review of Applications for National Security and Property Rights Issues (1)

What is the purpose of reviewing patent applications for national security and property rights issues?

MPEP 500 - Receipt and Handling of Mail and Papers (1)

What is the process for reviewing a refusal to grant a filing date for a patent application?

MPEP 506 - Completeness of Original Application (1)

What is the process for reviewing a refusal to grant a filing date for a patent application?

Patent Law (2)

What is the purpose of reviewing patent applications for national security and property rights issues?

What is the process for reviewing a refusal to grant a filing date for a patent application?

Patent Procedure (1)

What is the process for reviewing a refusal to grant a filing date for a patent application?