How do secrecy orders affect patent term adjustment?
Secrecy orders can have a significant impact on patent term adjustment (PTA). According to MPEP 2731, there are several ways in which a secrecy order can affect PTA: “37 CFR 1.703(d) pertains to the provisions of 35 U.S.C. 154(b)(1)(C)(ii) and indicates that the period of adjustment under 37 CFR 1.702(d) is the sum of the…
Read MoreHow is the period of patent term adjustment calculated?
The period of patent term adjustment is calculated based on various factors outlined in 37 CFR 1.703. The calculation includes: Delays due to the USPTO failing to meet certain deadlines Delays beyond three years from the actual filing date Delays due to interferences, secrecy orders, and successful appeals The MPEP states, “37 CFR 1.703 specifies…
Read MoreWhat are the grounds for patent term adjustment?
The grounds for patent term adjustment are specified in 37 CFR 1.702 and include: Delays due to the USPTO failing to take certain actions within specified timeframes Delays due to the USPTO failing to issue a patent within three years of the actual filing date Delays due to interferences, secrecy orders, and appeals As stated…
Read MoreHow are petitions related to applications under secrecy orders handled?
Petitions related to applications under secrecy orders are handled by the Director of the Technology Center who Oversees Licensing and Review. This includes various aspects of secrecy orders and related matters. According to MPEP 1002.02(c)(1): “Petitions relating to any application under a secrecy order pursuant to 35 U.S.C. 181, including petitions to expunge subject matter…
Read MoreHow should national security classified patent applications be filed with the USPTO?
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…
Read MoreWhat is a Secrecy Order?
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)
Read MoreWhat happens if a defense agency determines an invention disclosed in a patent application would be detrimental to national security?
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…
Read MoreWhat happens to a patent application when a Secrecy Order is imposed?
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…
Read MoreWhat happens when a Secrecy Order patent application is in condition for allowance?
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…
Read MoreHow are appeals handled in Secrecy Order patent cases?
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…
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