How 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…
Read MoreWhat 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…
Read MoreHow do you petition for a retroactive foreign filing license?
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 filed2) The filing dates in each country3) A verified statement containing:– An averment that the…
Read MoreWhat happens to patent applications subject to a Secrecy Order at the USPTO?
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
Read MoreWhat actions can be taken if a patent application contains national security markings but no 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…
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