Patent Law FAQ

While most patent application files are available for public inspection, there are several exceptions:

• Pending or abandoned applications that have not been published under 35 U.S.C. 122(b)
• Applications subject to a secrecy order
• Provisional applications
• Applications that have been terminated or denied and are no longer open to public inspection
• Interference files, until judgment is entered (subject to certain exceptions)
• Applications for extension of patent term and any related submissions
• Certain trade secret, proprietary, and protective order materials

These exceptions are in place to protect confidential information and maintain the integrity of the patent application process.

While most patent application files are available for public inspection, there are some exceptions:

• Pending or abandoned applications that have not been published
• Applications subject to secrecy orders
• Certain international applications
• Applications for which the United States is not a designated country
• Information that would violate personal privacy or proprietary rights

These exceptions help protect sensitive information and maintain confidentiality in specific cases.

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:

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

If a defense agency concludes that disclosure of the invention would be detrimental to national security, they will recommend a secrecy order to the Commissioner for Patents. The Commissioner will then issue the secrecy order and withhold publication of the application or granting of a patent for as long as the national interest requires.

“If a defense agency concludes that disclosure of the invention would be detrimental to the national security, a secrecy order is recommended to the Commissioner for Patents. The Commissioner then issues a Secrecy Order and withholds the publication of the application or the grant of a patent for such period as the national interest requires.”

National security classified patent applications may be filed with the USPTO in the following ways:

• Hand-carried to Licensing and Review
• Mailed to the USPTO in compliance with 37 CFR 5.1(a) and Executive Order 13526
• Filed via the Department of Defense Secret Internet Protocol Router Network (SIPRNET) – these will be considered filed via the USPTO patent electronic filing system

The applicant must also either obtain a secrecy order or provide authority to cancel the security markings per 37 CFR 5.1(d).

A Secrecy Order is an order issued by the Commissioner for Patents that prevents disclosure or publication of an invention in a patent application when the publication or disclosure would be detrimental to national security. The order requires that the invention be kept secret and may restrict filing of foreign patent applications. (MPEP 120)

Applications subject to a Secrecy Order will be:

• Deleted from any image file system within the USPTO
• Converted to paper
• Held with Licensing and Review
• Transferred to a designated examiner for examination

As explained in MPEP 130, when a patent application under a Secrecy Order is in condition for allowance, “a notice of allowability (Form D-10) is issued, thus closing the prosecution.” See 37 CFR 5.3(c).

After the notice of allowability is issued, any amendments received are not entered or responded to until the Secrecy Order is rescinded. Once the Secrecy Order is rescinded, amendments will be entered if they are free from objections, otherwise they will be denied entry.

When a Secrecy Order is imposed on a patent application, it is examined in a secure location by examiners with national security clearances under the control of Licensing and Review. If the Secrecy Order is imposed after the application is already docketed in another Technology Center, it will be transferred to a designated examiner in Licensing and Review.

As stated in MPEP 130, “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.”

If an examiner comes across a patent application that contains national security markings but does not have a Secrecy Order imposed, MPEP 130 instructs that “the examiner should require the applicant to seek imposition of a Secrecy Order or authority to cancel the markings.” This should be done preferably with the first office action and before final disposition of the application.

37 CFR 5.1(d) states that if no Secrecy Order has issued, the USPTO will set a time period for the applicant to take one of three actions to prevent abandonment:

1. Obtain a Secrecy Order
2. Declassify the application
3. Submit evidence of a good faith effort to obtain a Secrecy Order under 37 CFR 5.2(a)

Additionally, per 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.”

For patent applications under a Secrecy Order, prosecution proceeds as normal, including issuing final rejections that the applicant must properly reply to. If the applicant files an appeal, it must be completed to prevent abandonment of the application.

However, as noted in MPEP 130, “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.”

A petition for a retroactive foreign filing license may be filed under 37 CFR 5.25 if an unlicensed foreign filing occurred through error. The petition must include:

1) A listing of each foreign country where the unlicensed patent application was filed
2) The filing dates in each country
3) A verified statement containing:
– An averment that the subject matter was not under a secrecy order and is not currently under a secrecy order
– A showing that the license has been diligently sought after discovery of the proscribed foreign filing
– An explanation of why the material was filed abroad through error without the required license
4) The required fee under 37 CFR 1.17(g)

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:

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

A Secrecy Order is an order issued by the Commissioner for Patents that prevents disclosure or publication of an invention in a patent application when the publication or disclosure would be detrimental to national security. The order requires that the invention be kept secret and may restrict filing of foreign patent applications. (MPEP 120)

As explained in MPEP 130, when a patent application under a Secrecy Order is in condition for allowance, “a notice of allowability (Form D-10) is issued, thus closing the prosecution.” See 37 CFR 5.3(c).

After the notice of allowability is issued, any amendments received are not entered or responded to until the Secrecy Order is rescinded. Once the Secrecy Order is rescinded, amendments will be entered if they are free from objections, otherwise they will be denied entry.

Applications subject to a Secrecy Order will be:

• Deleted from any image file system within the USPTO
• Converted to paper
• Held with Licensing and Review
• Transferred to a designated examiner for examination

When a Secrecy Order is imposed on a patent application, it is examined in a secure location by examiners with national security clearances under the control of Licensing and Review. If the Secrecy Order is imposed after the application is already docketed in another Technology Center, it will be transferred to a designated examiner in Licensing and Review.

As stated in MPEP 130, “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.”

If a defense agency concludes that disclosure of the invention would be detrimental to national security, they will recommend a secrecy order to the Commissioner for Patents. The Commissioner will then issue the secrecy order and withhold publication of the application or granting of a patent for as long as the national interest requires.

“If a defense agency concludes that disclosure of the invention would be detrimental to the national security, a secrecy order is recommended to the Commissioner for Patents. The Commissioner then issues a Secrecy Order and withholds the publication of the application or the grant of a patent for such period as the national interest requires.”

While most patent application files are available for public inspection, there are several exceptions:

• Pending or abandoned applications that have not been published under 35 U.S.C. 122(b)
• Applications subject to a secrecy order
• Provisional applications
• Applications that have been terminated or denied and are no longer open to public inspection
• Interference files, until judgment is entered (subject to certain exceptions)
• Applications for extension of patent term and any related submissions
• Certain trade secret, proprietary, and protective order materials

These exceptions are in place to protect confidential information and maintain the integrity of the patent application process.

While most patent application files are available for public inspection, there are some exceptions:

• Pending or abandoned applications that have not been published
• Applications subject to secrecy orders
• Certain international applications
• Applications for which the United States is not a designated country
• Information that would violate personal privacy or proprietary rights

These exceptions help protect sensitive information and maintain confidentiality in specific cases.

If an examiner comes across a patent application that contains national security markings but does not have a Secrecy Order imposed, MPEP 130 instructs that “the examiner should require the applicant to seek imposition of a Secrecy Order or authority to cancel the markings.” This should be done preferably with the first office action and before final disposition of the application.

37 CFR 5.1(d) states that if no Secrecy Order has issued, the USPTO will set a time period for the applicant to take one of three actions to prevent abandonment:

1. Obtain a Secrecy Order
2. Declassify the application
3. Submit evidence of a good faith effort to obtain a Secrecy Order under 37 CFR 5.2(a)

Additionally, per 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.”

National security classified patent applications may be filed with the USPTO in the following ways:

• Hand-carried to Licensing and Review
• Mailed to the USPTO in compliance with 37 CFR 5.1(a) and Executive Order 13526
• Filed via the Department of Defense Secret Internet Protocol Router Network (SIPRNET) – these will be considered filed via the USPTO patent electronic filing system

The applicant must also either obtain a secrecy order or provide authority to cancel the security markings per 37 CFR 5.1(d).

A petition for a retroactive foreign filing license may be filed under 37 CFR 5.25 if an unlicensed foreign filing occurred through error. The petition must include:

1) A listing of each foreign country where the unlicensed patent application was filed
2) The filing dates in each country
3) A verified statement containing:
– An averment that the subject matter was not under a secrecy order and is not currently under a secrecy order
– A showing that the license has been diligently sought after discovery of the proscribed foreign filing
– An explanation of why the material was filed abroad through error without the required license
4) The required fee under 37 CFR 1.17(g)

For patent applications under a Secrecy Order, prosecution proceeds as normal, including issuing final rejections that the applicant must properly reply to. If the applicant files an appeal, it must be completed to prevent abandonment of the application.

However, as noted in MPEP 130, “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.”

While most patent application files are available for public inspection, there are several exceptions:

• Pending or abandoned applications that have not been published under 35 U.S.C. 122(b)
• Applications subject to a secrecy order
• Provisional applications
• Applications that have been terminated or denied and are no longer open to public inspection
• Interference files, until judgment is entered (subject to certain exceptions)
• Applications for extension of patent term and any related submissions
• Certain trade secret, proprietary, and protective order materials

These exceptions are in place to protect confidential information and maintain the integrity of the patent application process.

While most patent application files are available for public inspection, there are some exceptions:

• Pending or abandoned applications that have not been published
• Applications subject to secrecy orders
• Certain international applications
• Applications for which the United States is not a designated country
• Information that would violate personal privacy or proprietary rights

These exceptions help protect sensitive information and maintain confidentiality in specific cases.