Chapter    100  Secrecy, Access, National Security, and Foreign Filing
---SECTION---101 General

35 U.S.C. 122 Confidential status of applications.

Applications for patents shall be kept in confidence by the Patent and
Trademark Office and no information concerning the same given without
authority of the applicant or owner unless necessary to carry out the
provisions of any Act of Congress or in such special circumstances as
may be determined by the Commissioner.

18 U.S.C. 2071 Concealment, removal, or mutilation generally.

(a) Whoever willfully and unlawfully conceals, removes, mutilates,
obliterates, or destroys, or attempts to do so, or, with intent to do so
takes and carries away any record, proceeding, map, book, paper,
document, or other thing, filed or deposited with any clerk or officer
of any court of the United States, or in any public office, or with any
judicial or public officer of the United States, shall be fined under
this title or imprisoned not more than three years, or both.

(b) Whoever, having the custody of any such record, proceeding, map,
book, document, paper, or other thing, willfully and unlawfully
conceals, removes, mutilates, obliterates, falsifies, or destroys the
same, shall be fined under this title or imprisoned not more than three
years, or both; and shall forfeit his office and be disqualified from
holding any office under the United States. As used in this subsection,
the term "office" does not include the office held by any person as a
retired officer of the Armed Forces of the United States.

37 CFR 1.14 Patent applications preserved in confidence.

(a) Patent applications are generally preserved in confidence pursuant
to 35 U.S.C. 122. No information will be given concerning the filing,
pendency, or subject matter of any application for patent, and no access
will be given to, or copies furnished of, any application or papers
relating thereto, except as set forth in this section.

(1) Status information includes information such as whether the
application is pending, abandoned, or patented, as well as the
application number and filing date (or international filing date or date
of entry into the national stage).

(i) Status information concerning an application may be supplied:

(A) When copies of, or access to, the application may be provided
pursuant to paragraph (a)(3) of this section;

(B) When the application is identified by application number or serial
number and filing date in a published patent document or in a U.S.
application open to public inspection; or

(C) When the application is the national stage of an international
application in which the United States of America has been indicated as
a Designated State.

(ii) Status information concerning an application may also be supplied
when the application claims the benefit of the filing date of an
application for which status information may be provided pursuant to
paragraph (a)(1)(i) of this section.

(2) Copies of an application-as-filed may be provided to any person,
upon written request accompanied by the fee set forth in Section 
1.19(b)(1), without notice to the applicant, if the application is
incorporated by reference in a U.S. patent.

(3) Copies of (upon payment of the fee set forth in Section 
1.19(b)(2)), and access to, an application file wrapper and contents may
be provided to any person, upon written request, without notice to the
applicant, when the application file is available and:

(i) It has been determined by the Commissioner to be necessary for the
proper conduct of business before the Office or warranted by other
special circumstances;

(ii) The application is open to the public as provided in Section 
1.11(b);

(iii) Written authority in that application from the applicant, the
assignee of the application, or the attorney or agent of record has been
granted; or

(iv) The application is abandoned, but not if the application is in the
file jacket of a pending application under Section  1.53(d), and is:

(A) Referred to in a U.S. patent;

(B) Referred to in a U.S. application open to public inspection;

(C) An application which claims the benefit of the filing date of a U.S.
application open to public inspection; or

(D) An application in which the applicant has filed an authorization to
lay open the complete application to the public.

(b) Complete applications (Section  1.51(a)) which are abandoned may be
destroyed and hence may not be available for access or copies as
permitted by paragraph (a)(3)(iv) of this section after 20 years from
their filing date, except those to which particular attention has been
called and which have been marked for preservation.

                  +++    

All Patent and Trademark Office employees are legally obligated to
preserve pending applications for patents in confidence. 35 U.S.C. 122
and 18 U.S.C. 2071 impose statutory requirements which cover the
handling of patent applications and related documents. Suspension,
removal, and even criminal penalties may be imposed for violations of
these statutes.

In order to provide prompt and orderly service to the public,
application files must be readily available to authorized Patent and
Trademark Office employees at all times. Accordingly, in carrying or
transporting applications and related papers, care must be exercised by
Patent and Trademark Office employees, especially in corridors and
elevators, to ensure that applications and related papers are always
under employee surveillance and control. Application files must not be
displayed or handled so as to permit perusal or inspection by any
unauthorized member of the public.

Interoffice mail must be sent in appropriate envelopes.

No part of any application or paper related thereto should be reproduced
or copied except for official purposes.

No patent application or related document may be removed from the
premises occupied by the Patent and Trademark Office, except for
handling as required by the issue process, unless specifically
authorized by the Commissioner. If such authorization is given, the
employee having custody will be responsible for maintaining
confidentiality and otherwise conforming with the requirements of law.

Applications must not be placed in desk drawers or other locations where
they might be easily overlooked or are not visible to authorized
personnel.

Whenever an application is removed from the operating area having
custody of the file, a charge on the PALM system must be properly and
promptly made.

Papers arriving within the groups must be properly and promptly placed
within the appropriate files. If papers are received with faulty
identifications, this should be corrected at once. If papers are
received at a destination for which they are not intended due to faulty
identification or routing, appropriate corrective action should be taken
at once to ensure the prompt receipt thereof at destination. See MPEP
Section  508.01 and Section  508.03.

All Patent and Trademark Office employees should bear in mind at all
times the critical importance of ensuring the confidentiality and
accessibility of patent application files and related documents, and in
addition to the specific procedures referred to above, should take all
appropriate action to that end.

Examiners, classifiers, and other Patent and Trademark Office employees
who assist public searchers by outlining or indicating a field of
search, should also bear in mind the critical importance of ensuring the
confidentiality of information revealed by a searcher when requesting
field of search assistance. See MPEP Section  1701. Statutory
requirements and curbs regarding the use of information obtained by an
employee through government employment are imposed by 15 U.S.C. 15(b)
and 18 U.S.C. 1905.

Examiners, while holding interviews with attorneys and applicants,
should be careful to prevent exposures of files and drawings of other
applicants.

Extreme care should be taken to prevent inadvertent disclosure of the
filing date or application number of any application filed by another
party. This applies not only to Office actions but also to notes
(usually in pencil) in the file wrapper.

TELEPHONE AND IN-PERSON REQUESTS FOR INFORMATION CONCERNING PENDING OR
ABANDONED APPLICATIONS

Normally no information concerning pending or abandoned patent
applications (except reissue applications and reexamination proceedings)
may be given to the public without the authorization of the applicant,
the assignee of record, or the attorney or agent of record. See 35
U.S.C. 122 and 37 CFR 1.14. Other exceptions are specified in 37 CFR
1.14.

When handling an incoming telephone call or an in-person request for
information regarding a pending or abandoned patent application, no
information should be disclosed until the identity of the requester can
be adequately verified as set forth below. Particular care must be
exercised when a request is made for the issue date or patent number
assigned to a pending patent application. If the issue date is later
than the current date (i.e., the date of the request), such information
may be given only to the applicant, or the assignee of record, or the
attorney or agent of record.

The following procedure should be followed before any information about
a pending or abandoned patent application is given over the telephone:

(A) Obtain the caller's full name, the application number, and the
caller's telephone number. Ask the caller if there is an attorney or
agent of record.

(1) If there is an attorney or agent of record, ask for his or her
registration number. If the registration number is not known, ask for
the name of the attorney or agent of record. Inform caller that an
attorney or agent of record will be called after verification of his/her
identity and that information concerning the application will be
released to that attorney or agent.

(2) If there is no attorney or agent of record, ask the caller why he or
she is entitled to information concerning the application. If the caller
identifies himself or herself as an applicant or an authorized
representative of the assignee of record, ask for the correspondence
address of record and inform caller that his or her association with the
application must be verified before any information concerning the
application can be released and that he or she will be called back. If
the caller indicates that he or she is not an applicant or an authorized
representative of the assignee of record then status information may
only be given pursuant to MPEP Section  102.

(B) Then, verify that information concerning the application can be
released by checking PALM or the application file.

(1) If the caller stated there was an attorney or agent of record, PALM
Intranet or the 2954 PALM screen should be used to verify the
registration number given or to obtain the registration number of an
attorney or agent of record. Then PALM Intranet or the 3552 PALM screen
(using the registration number) should be used to obtain a telephone
number for an attorney or agent of record.

(2) If the caller identified himself or herself as an applicant or an
authorized representative of the assignee of record, PALM Intranet or
the 2950 PALM screen should be used to verify the correspondence address
of record. PALM Intranet or the 2954 PALM screen should be used to
determine if there is an attorney or agent of record. If there is an
attorney or agent of record, their telephone number can be obtained from
PALM Intranet or the 3552 PALM screen.

(C) Then, return the call using the telephone number as specified below.

(1) If an attorney or agent is of record in the application, information
concerning the application should only be released by calling the
attorney's or agent's telephone number obtained from PALM Intranet or
the 3552 PALM screen.

(2) If the applicant or an authorized representative of the assignee of
record requests information, and there is no attorney or agent of record
and the correspondence address of record has been verified, information
concerning the application can be released to the caller using the
telephone number given by the caller. If the caller's association with
the application cannot be verified, no information concerning the
application will be released. However, the caller should be informed
that the caller's association with the application could not be
verified.

In handling an in-person request, ask the requester to wait while
verifying their identification as in (B) above.

---SECTION---102 Information as to Status of an Application

37 CFR 1.14 Patent applications preserved in confidence.

(a) Patent applications are generally preserved in confidence pursuant
to 35 U.S.C. 122. No information will be given concerning the filing,
pendency, or subject matter of any application for patent, and no access
will be given to, or copies furnished of, any application or papers
relating thereto, except as set forth in this section.

(1) Status information includes information such as whether the
application is pending, abandoned, or patented, as well as the
application number and filing date (or international filing date or date
of entry into the national stage).

(i) Status information concerning an application may be supplied:

(A) When copies of, or access to, the application may be provided
pursuant to paragraph (a)(3) of this section;

(B) When the application is identified by application number or serial
number and filing date in a published patent document or in a U.S.
application open to public inspection; or

(C) When the application is the national stage of an international
application in which the United States of America has been indicated as
a Designated State.

(ii) Status information concerning an application may also be supplied
when the application claims the benefit of the filing date of an
application for which status information may be provided pursuant to
paragraph (a)(1)(i) of this section.

                  +++    

Status information of an application means only the following
information:

(A) whether the application is pending, abandoned, or patented;

(B) the application number and filing date; and

(C) whether one or more applications claim the benefit of the filing
date of the identified application, and if there is such other
application(s), the application number(s), filing date(s) and whether
the other application(s) is (are) pending, abandoned or patented.

A requester seeking status information regarding an application should
contact the File Information Unit (see MPEP Section  1730). The File
Information Unit will check the relevant Office records and will inform
the requester whether the application has issued as a patent, and if the
application has issued as a patent, the patent number, issue date and
classification. If the application has not issued as a patent, but is
pending or abandoned then the File Information Unit should determine
whether the requester is:

(A) an inventor;

(B) the attorney or agent of record in the application;

(C) the assignee of record in the application; or

(D) a person with written authority from (A), (B), or (C).

If the requester is (A), (B), (C), or (D), as set forth above, then the
requester is entitled to status information. If the requester is
inquiring about whether a reply was received or when an Office action
can be expected, the requester should be directed to call the Examining
Group to which the application is assigned. The assignment of an
application to a Group can be determined from PALM Intranet or the 2952
PALM screen.

If the requester is not (A), (B), (C), or (D), as set forth above, and
the application is (1) identified by application number (or serial
number and filing date) in a published patent document, or (2) an
application claiming the benefit of the filing date of an application
identified by application number (or serial number and filing date) in a
published patent document, then a written request including a copy of a
published patent document (United States or foreign) which refers to the
specific application must be provided when requesting status information
for the application. If the published patent document is not in English,
then a translation of the pertinent part thereof must also be included.
The published patent document may be presented in person to the File
Information Unit or in written correspondence to the Patent and
Trademark Office, for example, by facsimile transmission. Any written
correspondence must include a return address or facsimile number. If the
application is referred to by application number or serial number and
filing date in a published patent document, pursuant to 37 CFR
1.14(a)(1)(i)(B), the requester is entitled to status information for
the application. (The published patent document will at least identify
the application from which the patent itself was issued.) PALM Intranet
or the 2960 PALM screen should be used to determine the status of the
application. If the requester asks whether there are any applications on
file which claim the benefit of the filing date of the identified
application, pursuant to 37 CFR 1.14(a)(1)(ii), status information
(application number, filing date and whether the application is pending,
abandoned or patented) for the applications claiming benefit of the
identified application may be given to the requester as well. PALM
Intranet or the 2962 PALM screen should be used to determine the
application number and filing date of any applications claiming the
benefit of the filing date of the identified application. The requester
should be informed of the national applications listed in the "child"
section of the screen. If the child application is not shown to have
been patented on the 2962 PALM screen, the 2960 PALM transaction should
be used to determine whether the application is pending or abandoned.
Alternatively, the 2963 PALM transaction may be used with the patent
number for continuity data for the patent. Other information contained
on the screen, such as whether it is a C-I-P, continuation or divisional
application, the date of abandonment of the application and issue date
may be confidential information and should not be communicated. As to
the extent of the chain of applications for which status information is
available, the rule applies only to subsequent and not prior
applications.

Furthermore, if the requester is not (A), (B), (C), or (D), as set forth
above, but the application is a national stage application or any
application claiming the benefit of the filing date of a published
international application and the United States of America has been
indicated as a Designated State in the international application,
pursuant to 37 CFR 1.14(a)(1)(i)(C), the requester is entitled to status
information for the national stage application as well as any
application claiming the benefit of the filing date of the published
international application. A copy of the published international
application must be supplied with the status request. If the requester
asks whether a national stage application has been filed, then the 3133
PALM screen should be used and the requester should be informed of any
national stage application indicated. If status information is requested
for any application claiming the benefit of the filing date of the
referenced published international application, there is no single PALM
transaction for this request. The status request should be forwarded to
the PCT Help desk for a response to this inquiry (see MPEP Section 
1730). Alternatively, inquiries relating to applications claiming the
benefit of the filing date of a published international application may
be directed to the PCT Help desk. Only the serial number and filing
date, or application number, as well as whether it is pending,
abandoned, or patented may be given for the national stage application
and for any applications claiming the benefit of the filing date of the
referenced published international application. Other information
contained on the screen, such as whether it is a C-I-P, continuation or
divisional application, the date of abandonment of the application and
issue date may be confidential information and should not be
communicated. 

STATUS LOCATION INFORMATION FOR OFFICE PERSONNEL

When it is desired to determine the current location or status of an
application, Office personnel should use PALM.

However, inasmuch as all 06 series applications prior to 714,000 are not
currently in the PALM system, Office personnel requesting
status/location information on those applications determined not to be
in the PALM system will be requested to contact the File Information
Unit (see MPEP Section  1730) where the numerical index records of the
above mentioned applications are maintained.

---SECTION---103 Right of Public to Inspect Patent Files and Some
Application Files

37 CFR 1.11 Files open to the public.

(a) After a patent has been issued or a statutory invention registration
has been published, the specification, drawings, and all papers relating
to the case in the file of the patent or statutory invention
registration are open to inspection by the public, and copies may be
obtained upon paying the fee therefor. See Section  2.27 for trademark
files.

(b) All reissue applications, all applications in which the Office has
accepted a request to open the complete application to inspection by the
public, and related papers in the application file, are open to
inspection by the public, and copies may be furnished upon paying the
fee therefor. The filing of reissue applications, other than continued
prosecution applications under Section  1.53(d) of reissue applications,
will be announced in the Official Gazette. The announcement shall
include at least the filing date, reissue application and original
patent numbers, title, class and subclass, name of the inventor, name of
the owner of record, name of the attorney or agent of record, and
examining group to which the reissue application is assigned.

(c) All requests for reexamination for which the fee under Section 
1.20(c) has been paid, will be announced in the Official Gazette. Any
reexaminations at the initiative of the Commissioner pursuant to Section 
1.520 will also be announced in the Official Gazette. The announcement
shall include at least the date of the request, if any, the
reexamination request control number or the Commissioner initiated order
control number, patent number, title, class and subclass, name of the
inventor, name of the patent owner of record, and the examining group to
which the reexamination is assigned.

(d) All papers or copies thereof relating to a reexamination proceeding
which have been entered of record in the patent or reexamination file
are open to inspection by the general public, and copies may be
furnished upon paying the fee therefor.

(e) The file of any interference involving a patent, a statutory
invention registration, a reissue application or an application on which
a patent has been issued or which has been published as a statutory
invention registration, is open to inspection by the public, and copies
may be obtained upon paying the fee therefor, if: (1) the interference
has terminated, or (2) an award of priority or judgment has been entered
as to all parties and all counts.

OBTAINING A COPY OF A PENDING APPLICATION THAT IS INCORPORATED BY
REFERENCE IN A UNITED STATES PATENT

37 CFR 1.14 Patent applications preserved in confidence.

(a) Patent applications are generally preserved in confidence pursuant
to 35 U.S.C. 122. No information will be given concerning the filing,
pendency, or subject matter of any application for patent, and no access
will be given to, or copies furnished of, any application or papers
relating thereto, except as set forth in this section.

                  +++    

(2) Copies of an application-as-filed may be provided to any person,
upon written request accompanied by the fee set forth in Section 
1.19(b)(1), without notice to the applicant, if the application is
incorporated by reference in a U.S. patent.

                  +++    

The incorporation by reference of a pending application in a printed
United States patent constitutes a special circumstance under 35 U.S.C.
122 warranting that a copy of the application-as-filed be provided upon
written request. The written request, including a copy of the page of
the United States patent including the incorporation by reference, and
the requisite fee set forth in 37 CFR 1.19(b)(1), should be directed to
Certification Division. However, an incorporation by reference that is
made as part of a transmittal letter for the application, or as part of
text of the application that is later canceled and which does not appear
as part of the printed patent, may not be relied upon to obtain a copy
of the application as originally filed. A petition for access with an
explanation of special circumstances other than the not-printed
incorporation by reference will be required.

APPLICATION FILES AVAILABLE UPON REQUEST

37 CFR 1.14 Patent applications preserved in confidence.

(a) Patent applications are generally preserved in confidence pursuant
to 35 U.S.C. 122. No information will be given concerning the filing,
pendency, or subject matter of any application for patent, and no access
will be given to, or copies furnished of, any application or papers
relating thereto, except as set forth in this section.

                  +++    

(3) Copies of (upon payment of the fee set forth in Section 
1.19(b)(2)), and access to, an application file wrapper and contents may
be provided to any person, upon written request, without notice to the
applicant, when the application file is available and:

(i) It has been determined by the Commissioner to be necessary for the
proper conduct of business before the Office or warranted by other
special circumstances;

(ii) The application is open to the public as provided in Section 
1.11(b);

(iii) Written authority in that application from the applicant, the
assignee of the application, or the attorney or agent of record has been
granted; or

(iv) The application is abandoned, but not if the application is in the
file jacket of a pending application under Section  1.53(d), and is:

(A) Referred to in a U.S. patent;

(B) Referred to in a U.S. application open to public inspection;

(C) An application which claims the benefit of the filing date of a U.S.
application open to public inspection; or

(D) An application in which the applicant has filed an authorization to
lay open the complete application to the public.

                  +++    

Certain applications are available to the public without a petition for
access. ABANDONED applications meeting the requirements of 37 CFR
1.14(a)(3)(iv) and any application that is open to the public under 37
CFR 1.11 may be obtained by any person upon written request to the File
Information Unit without the specific written authority of the
applicant, assignee, attorney or agent of record or Commissioner. The
following abandoned applications are available from the File Information
Unit: (1) An ABANDONED application referred to in the application which
issued as a patent; and (2) a pending File Wrapper Continuation
application (FWC) filed under former 37 CFR 1.62 of an abandoned
application that meets the requirements of 37 CFR 1.14(a)(3)(iv). Under
former 37 CFR 1.62(f), where access is permitted to an application
within the file wrapper of a FWC application, the applicant has waived
the right to keep all other applications in the same file wrapper in
confidence.

	An abandoned application that is in the file wrapper of a pending
Continued Prosecution Application (CPA) filed under 37 CFR 1.53(d) is
not available without the specific written authority of the applicant,
assignee, attorney or agent of record, or Commissioner. 37 CFR
1.14(a)(3)(iv).

37 CFR 1.14(a)(3)(iv)(B) relates only to United States applications that
are open to public inspection. Published applications, such as PCT
applications, are not United States applications that are open to public
inspection under 37 CFR 1.14(a)(3)(iv)(B). Accordingly, if the
application is mentioned in a published PCT application as a priority
document, access is not available under 37 CFR 1.14(a)(3).

An ABANDONED application referenced in a U.S. patent or referenced in a
U.S. application that is open to public inspection may be ordered for
inspection by any member of the public through the File Information
Unit. Furthermore, an abandoned U.S. application which claims the filing
date of a U.S. application open to public inspection may also be ordered
by any member of the public through the File Information Unit. Orders
for files stored in repositories within the Crystal City (Arlington,
Virginia) area are normally filled within 4 to 8 hours. Orders for files
stored at the Federal Records Center in Suitland, Maryland, are normally
filled within 4 to 5 days. An abandoned file received by a member of the
public must be returned to the charge counter in the File Information
Unit before closing the same day it is received. If the abandoned
application is contained within a pending FWC application, the requester
will generally be routed to the appropriate examining group to inquire
as to the availability of the pending FWC application. If the pending
FWC application is available, then it will be forwarded to the File
Information Unit for the requester to pick-up.

Furthermore, copies of a patent application-as-filed and the contents of
a patent application file wrapper may be ordered from Certification
Division with a facsimile request and payment of the appropriate fee
under 37 CFR 1.19(b) by PTO Deposit Account, MasterCard or Visa by any
person having a right to access to the originally filed application or
patent. Regular service requests for an application-as-filed are
processed in about 17 days, and expedited requests for an application as
filed are processed in about 7 days. Copies of a patent related file
wrapper are generally made in about 25 days.

The Office does not provide for access to non-United States
applications.

PETITION FOR ACCESS

37 CFR 1.14 Patent applications preserved in confidence.

                  +++    

(e) Any request by a member of the public seeking access to, or copies
of, any pending or abandoned application preserved in confidence
pursuant to paragraph (a) of this section, or any papers relating
thereto, must:

(1) Be in the form of a petition and be accompanied by the petition fee
set forth in Section  1.17(i); or

(2) Include written authority granting access to the member of the
public in that particular application from the applicant or the
applicant's assignee or attorney or agent of record.

(Note, see Section  1.612(a) for access by an interference party to a
pending or abandoned application.)

Any interested party may file a petition, accompanied by the petition
fee, to the Commissioner for access to an application. Inasmuch as the
post office address is necessary for the complete identification of the
petitioner, it should always be included complete with zip code number.
Petitions for access are handled in the Special Program Law Office,
unless the application is involved an interference. See MPEP 1002.02(a).

The petition may be filed either with proof of service of copy upon the
applicant, assignee of record, or attorney or agent of record in the
application to which access is sought, or the petition may be filed in
duplicate, in which case the duplicate copy will be sent by the Office
to the applicant, assignee of record, or attorney or agent of record in
the application (hereinafter "applicant"). A separate petition, with
fee, should be filed for each application to which access is desired.
Each petition should show not only why access is desired, but also why
petitioner believes he or she is entitled to access. The applicant will
normally be given a limited period such as 3 weeks within which to state
any objection to the granting of the petition for access and reasons why
it should by denied. If applicant states that he or she has no objection
to the requested access, the petition will be granted. If objection is
raised or applicant does not respond, the petition will be decided on
the record. A determination will be made whether "special circumstances"
are present which warrant a grant of access under 35 U.S.C. 122. See
below when the application is the basis of a claim for benefit of an
earlier filing date under 35 U.S.C. 120 or part of the application is
incorporated by reference in a United States patent. "Special
circumstances" could be found where an applicant has relied upon his or
her application as a means to interfere with a competitor's business or
customers. See In re Crossman, 187 USPQ 367 (PTO Solicitor 1975); In re
Trimless Cabinets, 128 USPQ 95 (Comm'r Pat. 1960); and Ex parte Bonnie-B
Co., 1923 C.D. 42, 313 O.G. 453 (Comm'r Pat. 1922). Furthermore,
"special circumstances" could be found where an attorney of record in an
application in which a provisional double patenting rejection is made
does not have power of attorney in the copending application having a
common assignee or inventor. However, a more expeditious means of
obtaining access would be getting a power to inspect from an assignee or
inventor. See MPEP Section  104 and Section  106.01.

ACCESS WHERE PATENT CLAIMS 35 U.S.C. 120 BENEFIT

Whenever a patent relies on the filing date of an earlier but still
pending application, the public is entitled to see the portion of the
earlier application that relates to the common subject matter, and also
what prosecution, if any, was had in the earlier application of subject
matter claimed in the patent. In re Dreyfus, 137 USPQ 475 (Comm'r Pat.
1961). If applicant objects to the petition for access, he or she must
submit along with the objection two sets of a copy of the portion of the
application that relates to the common subject matter including all
materials relating to the prosecution in the application of the subject
matter claimed in the patent. Failure to submit these materials will
result in the entire application file being made available to
petitioner. The Office will not attempt to separate the noted materials
from the remainder of the application. Compare In re Marsh Eng'g. Co.,
1913 C.D. 183 (Comm'r Pat. 1913).

ACCESS TO PROVISIONAL APPLICATIONS

In provisional applications, access or certified copies will only be
given to parties with written authority from a named inventor, the
assignee of record, or the attorney or agent of record. Since
provisional applications do not require an oath or declaration, there
may be no power of attorney in the application. If the person requesting
a certified copy is not a named inventor, assignee of record, or an
attorney or agent of record, the requested certified copy will be
supplied to the correspondence address of the provisional application.
Provisional applications are also available in the same manner as any
other application. For example, an application that is relied upon for
priority in a U.S. patent and is abandoned is available under 37 CFR
1.14(a)(3)(iv)(A).

ACCESS WHERE PART OF AN APPLICATION IS INCORPORATED BY REFERENCE IN A
UNITED STATES PATENT

37 CFR 1.14(a)(2) permits a member of the public, without a petition for
access, to obtain a copy of a pending application, as originally filed,
when the application is incorporated by reference in a United States
patent upon filing of the appropriate request and payment of the
required fee. However, if only part of the application is incorporated
by reference, for example, where an application states, "the disclosure
of a valve on page 5, lines 5-35, of application No. XX/YYY,YYY, is
hereby incorporated by reference," then a petition for access is
required to obtain access to or a copy of the incorporated material.
Incorporation by reference of part of an application in a United States
patent constitutes a special circumstance under 35 U.S.C. 122 warranting
that access to that part of the original disclosure of the application
be granted on petition. The incorporation by reference will be
interpreted as a waiver of confidentiality of only that part of the
original disclosure, as filed, and not the entire application file.  In
re Gallo, 231 USPQ 496 (Comm'r Pat. 1986). If applicant objects to
access to the entire application file, two copies of the information
incorporated by reference must be submitted along with the objection. In
the example given, applicant would be required to provide two copies of
page 5, lines 5-35 of the XX/YYY,YYY application. Failure to provide the
material within the period provided will result in the entire
application (including prosecution) being made available to petitioner.
The Office will not attempt to separate the noted materials from the
remainder of the application. Compare In re Marsh Eng'g. Co., 1913 C.D.
183 (Comm'r Pat. 1913).

APPLICATION AT BOARD OF PATENT APPEALS AND INTERFERENCES

The Board of Patent Appeals and Interferences handles all petitions for
access to applications involved in an interference. See 37 CFR 1.612.

PUBLISHED DOCUMENTS

If a defensive publication, an abstract, or an abbreviature has been
published, the entire application is available to the public for
inspection and obtaining copies. See MPEP Section  711.06.

REISSUE APPLICATIONS

37 CFR 1.11(b) opens all reissue applications filed after March 1, 1977
to inspection by the general public. 37 CFR 1.11(b) also provides for
announcement of the filings of reissue applications in the Official
Gazette (except for continued prosecution applications filed under 37
CFR 1.53(d)) . This announcement will give interested members of the
public an opportunity to submit to the examiner information pertinent to
patentability of the reissue application.

The filing of a continued prosecution application under 37 CFR 1.53(d)
of a reissue application will not be announced in the Official Gazette.
Although the filing of a continued prosecution application of a reissue
application constitutes the filing of a reissue application, the
announcement of the filing of such continued prosecution application
would be redundant in view of the announcement of the filing of the
prior reissue application in the Official Gazette.

37 CFR 1.11(b) is applicable only to those reissue applications filed on
or after March 1, 1977. Those reissue applications previously on file
will not be automatically open to inspection but a liberal policy will
be followed by the Special Program Examiner in granting petitions for
access to such applications.

For those reissue applications filed on or after March 1, 1977, the
following procedure will be observed-

(A) The filing of reissue applications will be announced in the Official
Gazette (except for continued prosecution applications filed under 37
CFR 1.53(d) and will include certain identifying data as specified in 37
CFR 1.11(b). Any member of the general public may request access to a
particular reissue application filed after March 1, 1977. Since no
record of such request is intended to be kept, an oral request will
suffice. In the File Information Unit (Record Room), only the regular
application charge card need be completed and submitted. The charge card
will not be made part of a pending or abandoned reissue application.

(B) The pending reissue application files will be maintained in the
examining groups and inspection thereof will be supervised by group
personnel. Although no general limit is placed on the amount of time
spent reviewing the files, the Office may impose limitations, if
necessary. No access will be permitted while the application is actively
being processed.

(C) Where the reissue application has left the examining group for
administrative processing, requests for access should be directed to the
appropriate supervisory personnel in the division or branch where the
application is currently located.

(D) The reissue application file is not available to the public once the
reissue application file has been released and forwarded by the
examining group for publication of the reissue patent. This would
include any reissue application files which have been selected for a
quality review check at the Office of Quality Review. Unless prosecution
is reopened pursuant to a quality review check, the reissue application
files are not available to the public until the reissue patent issues.
This is because the reissue application file has been put into a special
format for printing purposes and to prevent disruption of the
publication process.

(E) Requests for copies of papers in the reissue application file must
be in writing addressed to Box 10, Commissioner of Patents and
Trademarks, Washington, DC 20231 and may be either mailed or delivered
to the Customer Service Window. The price for a copy of an application
as filed is set forth in 37 CFR 1.19(a)(3). Since no useful purpose is
seen for retaining such written request for copies of papers in reissue
applications, they should be destroyed after the order has been
completed.

REQUEST FOR REEXAMINATION

All requests for reexamination and related patent files are available to
the public. An announcement of the filing of each request in which the
entire fee has been paid and of each reexamination ordered at the
initiative of the Commissioner under 37 CFR 1.520 will be published in
the Official Gazette. Procedures for access and obtaining copies are
normally the same as those for reissue applications indicated above. See
also MPEP Section  2232 for certain times when the reexamination file is
not available for public inspection.

DECISIONS OF PATENT AND TRADEMARK OFFICE

37 CFR 1.14 Patent applications preserved in confidence.

                  +++    

(d) Any decision of the Board of Patent Appeals and Interferences, or
any decision of the Commissioner on petition, not otherwise open to
public inspection shall be published or made available for public
inspection if: (1) The Commissioner believes the decision involves an
interpretation of patent laws or regulations that would be of important
precedent value; and (2) the applicant, or any party involved in the
interference, does not within two months after being notified of the
intention to make the decision public, object in writing on the ground
that the decision discloses a trade secret or other confidential
information. If a decision discloses such information, the applicant or
party shall identify the deletions in the text of the decision
considered necessary to protect the information. If it is considered the
entire decision must be withheld from the public to protect such
information, the applicant or party must explain why. Applicants or
parties will be given time, not less than twenty days, to request
reconsideration and seek court review before any portions of decisions
are made public over their objection. See Section  2.27 for trademark
applications.

                  +++    

37 CFR 1.14(d) makes explicit the conditions under which significant
decisions of the Patent and Trademark Office will be made available to
the public, and includes reference to decisions of the Board of Patent
Appeals and Interferences and the Commissioner. The section is
applicable to decisions deemed by the Commissioner to involve an
interpretation of patent laws or regulation that would be of significant
precedent value, where such decisions are contained in either pending or
abandoned applications or in interference files not otherwise open to
the public. It is applicable whether or not the decision is a final
decision of the Patent and Trademark Office.

37 CFR 1.14(d) is considered to place a duty on the Patent and Trademark
Office to identify significant decisions and to take the steps necessary
to inform the public of such decisions, by publication of such
decisions, in whole or in part. It is anticipated, however, that no more
than a few dozen decisions per year will be deemed of sufficient
importance to warrant publication under the authority of this section.

37 CFR 1.15 Requests for identifiable records.

(a) Requests for records, not disclosed to the public as part of the
regular informational activity of the Patent and Trademark Office and
which are not otherwise dealt with in the rules in this part shall be
made in writing, with the envelope and the letter clearly marked
"Freedom of Information Request." Each such request, so marked, should
be submitted by mail addressed to the "Patent and Trademark Office,
Freedom of Information Request Control Desk, Box 8, Washington, D.C.
20231," or hand delivered to the Office of the Solicitor, Patent and
Trademark Office, Arlington, Virginia. The request will be processed in
accordance with the procedures set forth in Part 4 of Title 15, Code of
Federal Regulations.

(b) Any person whose request for records has been initially denied in
whole or in part, or has not been timely determined, may submit a
written appeal as provided in Section  4.8 of Title 15, Code of Federal
Regulations.

(c) Procedures applicable in the event of service of process or in
connection with testimony of employees on official matters and
production of official documents of the Patent and Trademark Office in
civil legal proceedings not involving the United States shall be those
established in parts 15 and 15a of Title 15, Code of Federal
Regulations.

ACCESSIBILITY OF NONFINAL DISCOVERY OPINIONS AND ORDERS ISSUED BY THE
BOARD OF PATENT APPEALS AND INTERFERENCES

A number of inquiries have been received from the patent bar and other
interested persons relating to discovery practice in interferences
before the Board of Patent Appeals and Interferences. The inquiries
indicate a need for making available to the public nonfinal Board
opinions, including concurring and dissenting opinions, as well as
orders, made in the adjudication of discovery matters before the Board.
While nonfinal opinions need not be made available to the public (5
U.S.C. 552(a)(2)), in order to satisfy the need, copies of non-final
opinions issued by the Board will be kept in a collection in the Service
Branch of the Board in the U.S. Patent and Trademark Office (Crystal
Gateway 2, 1225 Jefferson Davis Highway, Room 10C01, Arlington,
Virginia). Opinions in the collection may be reviewed by the public
during normal business hours (8:30 A.M. to 5:00 P.M.). Copies of
opinions may be ordered at the cost set forth in 37 CFR 1.19(b)(3).

In view of the provisions of 35 U.S.C. 122 and 37 CFR 1.14(a)(3)(iii), a
consent will be obtained by the Office from all parties in an
interference before an opinion issued in connection with the
interference is placed in the collection if the interference file is not
otherwise available to the public. Preliminary indications are that the
parties and their counsel generally consent.

In order to obtain optimum dissemination of the information contained in
the collection, opinions placed therein will be indexed according to
specific topics. Copies of the index will be updated from time to time
as the need occurs. Specific questions relating to the index and
collection may be directed to the Board.

The initial index is as follows:

[GRAPHIC]

---SECTION---104 Power to Inspect Application

No person but the applicant (any one of joint applicants), applicant's
legal representative, the assignee whose assignment is of record, or the
attorney, associate attorney, or agent of record will be permitted to
have access to the file of any pending application, except as provided
for under 37 CFR 1.11(b), former 37 CFR 1.62(f), or under the
interference rules, unless written authority from one of the above
indicated parties, identifying the application to be inspected and the
name of the person authorized to have access, is made of record, or upon
the written order of the Commissioner, which will also become a part of
the record of the case.

A person acting in a representative capacity under 37 CFR 1.34(a) may
not execute a power to inspect an application. For a discussion of power
of attorney in an application, see MPEP Section  402.

Approval by the primary examiner of a power to inspect is not required.
The technical support staff of the group to which the application is
assigned ascertains that the power is properly signed by one of the
above indicated parties, and if acceptable, enters it into the file. If
the power to inspect is unacceptable, notification of nonentry is
written by the technical support staff to the person who signed the
power.

When a power to inspect is received while a file is under the
jurisdiction of a service branch, such as the Customer Services
Division, the Service Branch of the Board of Patent Appeals and
Interferences, and the Publishing Division of the Office of Patent
Publication, the question of permission to inspect is decided by the
head of the branch who, if he or she approves, indicates the approval
directly on the power.

A "power to inspect" is, in effect, the same as a "power to inspect and
make copies."

Where an applicant relied on his or her application as a means to
interfere with a competitor's business or customers, permission to
inspect the application may be given the competitor by the Commissioner.
Ex parte Bonnie-B Co. , 1923 C.D. 42, 313 O.G. 453, (Comm'r Pat. 1922).
Such permission is via petition for access under 37 CFR 1.14(e).

An unrestricted power to inspect given by an applicant is, under
existing practice, recognized as good until and unless rescinded. The
same is true in the case of one given by the attorney or assignee so
long as such attorney or assignee retains his or her connection with the
application.

Permission to inspect given by the Commissioner, however, is not of a
continuing nature, since the conditions that justified the permission to
inspect when given may not apply at a later date.

ACCESS TO PATENT APPLICATIONS PROVISIONAL AND NONPROVISIONAL AND
INTERFERENCE FILES

In order to ensure that access to patent applications, other than
reissue applications filed after March 1, 1977, and interference files
is given only to persons who are entitled thereto or who are specially
authorized to have access under 37 CFR 1.14 and to ensure also that the
file record identifies any such specially authorized person who has been
given access to a file, the following practice will be observed by all
personnel of the Patent and Trademark Office:

(A) Access, as provided for in the rules, will be given on oral request
to any applicant, patentee, assignee, or attorney or agent of record in
an application or patent only upon proof of identity or upon recognition
based on personal acquaintance.

(B) Where a power of attorney or authorization of agent was given to a
registered firm prior to July 2, 1971, access will be given upon oral
request as in paragraph (A) above to any registered member or employee
of the firm who has signatory power for the firm.

(C) Unregistered employees of attorneys or agents, public stenographers,
and all other persons not within the provisions of paragraphs (A) and
(B) above will be given access only upon presentation of a written
authorization for access (power to inspect) signed by a person specified
in paragraph (A) above, which authorization will be entered as a part of
the official file. The power to inspect must specifically name the
person who is entitled to inspect and copy the application. An associate
or representative of the named person is not entitled to access to the
application on behalf of the authorized person. Further, the power to
inspect must specifically identify the application by application number
and be limited to a single application.

(D) In provisional applications, access or certified copies will only be
given to parties with written authority from a named inventor, the
assignee of record, or the attorney or agent of record. Since
provisional applications do not require an oath or declaration, there
may be no power of attorney in the application. If the person requesting
a certified copy is not a named inventor, assignee of record, or an
attorney or agent of record, the requested certified copy will be
supplied to the correspondence address of the provisional application.

---SECTION---105 Suspended or Excluded Practitioner Cannot Inspect

Patent and Trademark Office employees are forbidden to hold either oral
or written communication with an attorney or agent who has been
suspended or excluded from practice regarding an application unless it
be one in which said attorney or agent is the applicant. Power to
inspect given to such an attorney or agent will not be accepted.

---SECTION---106 Control of Inspection by Assignee

	The assignee of record of the entire interest in an application may
intervene in the prosecution of the case, appointing an attorney of his
or her own choice. See 37 CFR 3.71. Such intervention, however, does not
exclude the applicant from access to the application to see that it is
being prosecuted properly, unless the assignee makes specific request to
that effect. Any request to prevent the inventor from obtaining access
to the file should be filed as a separate paper, 37 CFR 1.4(c), and
should be directed to the Office of Petitions. If the request is
granted, the inventor will be informed that he or she will only be
permitted to inspect the application on sufficient showing why such
inspection is necessary to conserve his or her rights.  In re The
Kellogg Switchboard & Supply Company, 1906 C.D. 274 (Comm'r Pat. 1906).

---SECTION---106.01 Rights of Assignee of Part Interest

While it is only the assignee of record of the entire interest who can
intervene in the prosecution of an application or interference to the
exclusion of the applicant, an assignee of a part interest or a licensee
of exclusive right is entitled to inspect the application. See also MPEP
Section  402.10 for applications accorded status under 37 CFR 1.47.

---SECTION---110 Confidential Nature of International Applications
Article 30 Confidential Nature of the International Application.

(1)(a) Subject to the provisions of subparagraph (b), the International
Bureau and the International Searching Authorities shall not allow
access by any person or authority to the international application
before the international publication of that application, unless
requested or authorized by the applicant.

(b) The provisions of subparagraph (a) shall not apply to any
transmittal to the competent International Searching Authority, to
transmittals provided for under Article 13, and to communications
provided for under Article 20.

(2)(a) No national Office shall allow access to the international
application by third parties, unless requested or authorized by the
applicant, before the earliest of the following dates:

(i) date of the international publication of the international
application,

(ii) date of the receipt of the communication of the international
application under Article 20,

(iii) date of the receipt of a copy of the international application
under Article 22.

(b) The provisions of subparagraph (a) shall not prevent any national
Office from informing third parties that it has been designated, or from
publishing that fact. Such information or publication may, however,
contain only the following data: identification of the receiving Office,
name of the applicant, international filing date, international
application number, and title of the invention.

(c) The provisions of subparagraph (a) shall not prevent any designated
Office from allowing access to the international application for the
purposes of the judicial authorities.

(3) The provisions of paragraph (2)(a) shall apply to any receiving
Office except as far as transmittals provided for under Article 12(1)
are concerned.

(4) For the purposes of this Article, the term " access" covers any
means by which third parties may acquire cognizance, including
individual communication and general publication, provided, however,
that no national Office shall generally publish an international
application or its translation before the international publication or,
if international publication has not taken place by the expiration of 20
months from the priority date, before the expiration of 20 months from
the said priority date.

35 U.S.C. 368 Secrecy of certain inventions; filing international
applications in foreign countries.

(a) International applications filed in the Patent and Trademark Office
shall be subject to the provisions of chapter 17 of this title.

(b) In accordance with article 27(8) of the treaty, the filing of an
international application in a country other than the United States on
the invention made in this country shall be considered to constitute the
filing of an application in a foreign country within the meaning of
chapter 17 of this title, whether or not the United States is designated
in that international application.

(c) If a license to file in a foreign country is refused or if an
international application is ordered to be kept secret and a permit
refused, the Patent and Trademark Office when acting as a Receiving
Office, International Searching Authority, or International Preliminary
Examining Authority, may not disclose the contents of such application
to anyone not authorized to receive such disclosure.

Although most international applications are published soon after the
expiration of 18 months from the priority date, PCT Article 21(2)(a),
such publication does not open up the Home Copy or Search Copy to the
public for inspection.

---SECTION---115 Review of Applications for National Security and
Property Rights Issues

All applications filed in the Patent and Trademark Office are screened
for subject matter the disclosure of which might impact the national
security based on information provided by the Armed Services Patent
Advisory Board (ASPAB), the Department of Energy (DOE), and the National
Aeronautics and Space Administration (NASA). Such applications are
referred to the appropriate agencies. Authority for this referral can be
found in 35 U.S.C. 181 which provides, in part:

Whenever the publication or disclosure of an invention by the granting
of a patent, in which the Government does not have a property interest,
might, in the opinion of the Commissioner, be detrimental to the
national security, he shall make the application for patent in which
such invention is disclosed available for inspection to the Atomic
Energy Commission, the Secretary of Defense, and the chief officer of
any other department or agency of the Government designated by the
President as a defense agency of the United States.

If the agency concludes that disclosure of the invention would be
detrimental to the national security, the Commissioner is notified. The
Commissioner then issues a Secrecy Order and withholds the grant of a
patent for such period as the national interest requires.

For those applications in which the Government has a property interest,
responsibility for notifying the Commissioner of the need for a Secrecy
Order resides with the agency having that interest.

A second purpose for the screening of all applications is to identify
inventions in which DOE or NASA might have property rights. See 42
U.S.C. 2182 and 42 U.S.C. 2457 and MPEP Section  150.

A third function of the screening procedure is to process foreign filing
license petitions under 37 CFR 5.12(a). See MPEP Section  140.

Some applications have a label (Form PTO-1305) on the upper right hand
corner of the face of the file wrapper. A Notice of Allowance and Issue
Fee Due may not be mailed for those applications if the "REV" on the
label is circled (although the Examiner may be given credit for a
disposal). Such cases must be forwarded to Licensing and Review to have
the security review completed before the Notice of Allowance can be
mailed. Cases in which only "DOE" and/or "NASA" is circled should be
counted for allowance and the notice of allowance mailed before being
sent to Licensing and Review for processing under the Atomic Energy and
Space Acts.

While the initial screening is performed only by designated personnel,
all examiners have a responsibility to be alert for obviously sensitive
subject matter either in the original disclosure or subsequently
introduced, for example, by amendment. Such applications should be
forwarded to Licensing & Review. It would be helpful if the examiner
would identify the significant subject matter such as by a check mark in
the margin of the paper.

---SECTION---120 Secrecy Orders

37 CFR 5.1 Correspondence.

All correspondence in connection with this part, including petitions,
must be addressed to "Assistant Commissioner for Patents (Attention
Licensing and Review), Washington, DC 20231."

37 CFR 5.2 Secrecy order.

(a) When notified by the chief officer of a defense agency that
publication or disclosure of the invention by the granting of a patent
would be detrimental to the national security, an order that the
invention be kept secret will be issued by the Commissioner of Patents
and Trademarks.

(b) Any request for compensation as provided in 35 U.S.C. 183 must not
be made to the Patent and Trademark Office, but directly to the
department or agency which caused the secrecy order to be issued.

37 CFR 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 will not be set for
hearing until the secrecy order is removed.

(b) An interference will not be declared involving national applications
under secrecy order. However, if an applicant whose application is under
secrecy order seeks to provoke an interference with an issued patent, a
notice of that fact will be placed in the file wrapper of the patent.
(See Section  1.607(d)).

(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 Section  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 Section  1.311 of this
chapter, or take such other action as may then be warranted.

(d) International 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.

37 CFR 5.4 Petition for rescission of secrecy order.

(a) A petition for rescission or removal of a secrecy order may be filed by, or on behalf of, any principal affected thereby. Such petition
may be in letter form, and it must be in duplicate.

(b) The petition must recite any and all facts that purport to render
the order ineffectual or futile if this is the basis of the petition.
When prior publications or patents are alleged the petition must give
complete data as to such publications or patents and should be
accompanied by copies thereof.

(c) The petition must identify any contract between the Government and
any of the principals, under which the subject matter of the application
or any significant part thereof was developed, or to which the subject
matter is otherwise related. If there is no such contract, the petition
must so state.

(d) Appeal to the Secretary of Commerce, as provided by 35 U.S.C. 181,
from a secrecy order cannot be taken until after a petition for
rescission of the secrecy order has been made and denied. Appeal must be
taken within sixty days from the date of the denial, and the party
appealing, as well as the department or agency which caused the order to
be issued, will be notified of the time and place of hearing.

37 CFR 5.5 Permit to disclose or modification of secrecy order.

(a) Consent to disclosure, or to the filing of an application abroad, as
provided in 35 U.S.C. 182, shall be made by a "permit" or "modification"
of the secrecy order.

(b) Petitions for a permit or modification must fully recite the reason
or purpose for the proposed disclosure. Where any proposed disclosee is
known to be cleared by a defense agency to receive classified
information, adequate explanation of such clearance should be made in
the petition including the name of the agency or department granting the
clearance and the date and degree thereof. The petition must be filed in
duplicate.

(c) In a petition for modification of a secrecy order to permit filing
abroad, all countries in which it is proposed to file must be made
known, as well as all attorneys, agents and others to whom the material
will be consigned prior to being lodged in the foreign patent office.
The petition should include a statement vouching for the loyalty and
integrity of the proposed disclosees and where their clearance status in
this or the foreign country is known all details should be given.

(d) Consent to the disclosure of subject matter from one application
under secrecy order may be deemed to be consent to the disclosure of
common subject matter in other applications under secrecy order so long
as not taken out of context in a manner disclosing material beyond the
modification granted in the first application.

(e) Organizations requiring consent for disclosure of applications under
secrecy order to persons or organizations in connection with repeated
routine operation may petition for such consent in the form of a general
permit. To be successful such petitions must ordinarily recite the
security clearance status of the disclosees as sufficient for the
highest classification of material that may be involved.

SECRECY ORDER TYPES

Three types of Secrecy Orders, each of a different scope, are issued as
follows:

(A) Secrecy Order and Permit for Foreign Filing in Certain Countries -
to be used for those patent applications that contain technical data
whose export is controlled by the guidelines contained in DoD Directive
5230.25 dated November 6, 1984 which reviews export control under 10
U.S.C. 140(c) and the Militarily Critical Technology List (MCTL).

(B) Secrecy Order and Permit for Disclosing Classified Information - to
be used for those patent applications which contain technical data that
is properly classified or classifiable (no Government interest) under a
security guideline where the patent application owner has a current DoD
Security Agreement, DD Form 441. If the application is classifiable,
this secrecy order allows disclosure of the technical information as if
it were classified as prescribed in the Industrial Security Manual
(ISM).

(C) Secrecy Order - to be used for those patent applications that
contain technical data properly classifiable under a security guideline
where the patent application owner does not have a DoD Security
Agreement. The order prevents disclosure of the subject matter to anyone
without an express written consent from the Commissioner. However, quite
often this type of secrecy order includes a permit "Permit A" which
relaxes the disclosure restrictions as set forth in the permit.

The first Secrecy Order is intended to permit the widest utilization of
the technical data in the patent application while still controlling any
publication or disclosure which would result in an unlawful exportation.
This type of Secrecy Order is based on the applicable export controls in
either the Commodity Control List (CCL) or the Munitions Lists of the
International Traffic in Arms Regulation (ITAR), and identifies the
countries where corresponding patent applications may be filed.
Countries with which the United States has reciprocal security
agreements are: Australia, Belgium, Canada, Denmark, France, Germany,
Greece, Italy, Japan, Luxembourg, Netherlands, Norway, Portugal, Spain,
Sweden, Turkey and the United Kingdom. Please note that applications
subject to a secrecy order cannot be filed directly with the European
Patent Office since no reciprocal security agreement with this
organization exists. Applications must be filed in the individual EPO
member countries identified above.

The intent of the second Secrecy Order is to treat classified technical
data presented as a patent application in the same manner as any other
classified material. Accordingly, this Secrecy Order will include a
notification of the classification level of the technical data in the
application.

The third type of Secrecy Order is used where the other types of Orders
do not apply, including Orders issued by direction of agencies other
than the Department of Defense.

A Secrecy Order should not be construed in any way to mean that the
Government has adopted or contemplates adoption of the alleged invention
disclosed in an application; nor is it any indication of the value of
such invention.

RELATED SUBJECT MATTER

The Secrecy Orders apply to the subject matter of the invention, not
just to the patent application itself. Thus, the Secrecy Order restricts
disclosure or publication of the invention in any form. Furthermore,
other patent applications already filed or later filed which contain any
significant part of the subject matter of the application also fall
within the scope of the Order and must be brought to the attention of
Licensing & Review if such applications are not already under Secrecy
Order by the Commissioner.

The effects of a Secrecy Order are detailed in the notifying letter and
include restrictions on disclosure of the invention and delay of any
patent grant until the Order is rescinded.

CORRESPONDENCE

When the Secrecy Order issues, the law specifies that the subject matter
or any material information relevant to the application, including
unpublished details of the invention, shall not be published or
disclosed to any person not aware of the invention prior to the date of
the Order, including any employee of the principals except as permitted
by the Secrecy Order. The law also requires that all information
material to the subject matter of the application be kept in confidence,
unless written permission to disclose is first obtained from the
Commissioner of Patents and Trademarks except as provided by the Secrecy
Order. Therefore, all correspondence to be filed in an application which
is subject to a secrecy order and which is directly related to the
subject matter covered by the secrecy order must be transmitted to the
Office in a manner which would preclude disclosure to unauthorized
individuals and addressed as set forth in 37 CFR 5.1. Use of facsimile
transmission is not permitted. 37 CFR 1.6(d)(6).

Subject matter under Secrecy Order must be safeguarded under conditions
that will provide adequate protection and prevent access by unauthorized
persons.

When applicants desire to change the Power of Attorney in an application
under Secrecy Order, the name, date of birth and Social Security number
of the new attorney(s) should be included in the change notice so that
Licensing and Review may conduct the necessary access security clearance
checks.

Applicants should also ensure that the correspondence address (37 CFR
1.33) of any application under Secrecy Order represents a location
suitable for the receipt of security information.

PCT APPLICATIONS

If the Secrecy Order is applied to an international application, the
application will not be forwarded to the International Bureau as long as
the Secrecy Order remains in effect. If the Secrecy Order remains in
effect at the end of the time limit under PCT Rule 22.3, the
international application will be considered withdrawn (abandoned)
because the Record Copy of the international application was not
received in time by the International Bureau. 37 CFR 5.3(d), PCT Article
12(3), and PCT Rule 22.3. If the United States of America has been
designated, however, it is possible to save the U.S. filing date, by
fulfilling the requirements of 35 U.S.C. 371(c) prior to the withdrawal.

CHANGES IN SECRECY ORDERS

Applicants may petition for rescission or modification of the Secrecy
Order. For example, if the applicant believes that certain existing
facts or circumstances would render the Secrecy Order ineffectual, he or
she may informally contact the sponsoring agency to discuss these facts
or formally petition the Commissioner to rescind the Order. The
applicant may also petition the Commissioner for a permit to disclose
the invention to another or to modify the Secrecy Order stating fully
the reason or purpose for disclosure or modification. An example of such
a situation would be a request to file the application in a foreign
country. The requirements for petitions are described in 37 CFR 5.4 and
5.5. The law also provides that if an appeal is necessary, it may be
taken to the Secretary of Commerce. Any petition or appeal should be
addressed to the Assistant Commissioner for Patents, Attention:
Licensing and Review, Washington, DC 20231.

IMPROPER OR INADVERTENT DISCLOSURE

If, prior to or after the issuance of the Secrecy Order, any significant
part of the subject matter or material information relevant to the
application has been or is revealed to any U.S. citizen in the United
States, the principals must promptly inform such person of the Secrecy
Order and the penalties for improper disclosure. If such part of the
subject matter was or is disclosed to any person in a foreign country or
foreign national in the U.S., the principals must not inform such person
of the Secrecy Order, but instead must promptly furnish to the Assistant
Commissioner for Patents, Patent and Trademark Office, Attention:
Licensing and Review Washington, D.C. 20231 the following information to
the extent not already furnished: date of disclosure; name and address
of the disclosee; identification of such subject matter; and any
authorization by a U.S. government agency to export such subject matter.
If the subject matter is included in any foreign patent application or
patent, this should be identified.

EXPIRATION

Under the provision of 35 U.S.C. 181, a Secrecy Order remains in effect
for a period of 1 year from its date of issuance. A Secrecy Order may be
renewed for additional periods of not more than 1 year upon notice by a
government agency that the national interest so requires. The applicant
is notified of any such renewal.

The expiration of or failure to renew a Secrecy Order does not lessen in
any way the responsibility of the principals for the security of the
subject matter if it is subject to the provisions of Exec. Order No.
12,958 or the Atomic Energy Act of 1954, as amended, 42 U.S.C. 141  et.
seq. and 42 U.S.C. 2181 et. seq. or other applicable law unless the
principals have been expressly notified that the subject patent
application has been declassified by the proper authorities and the
security markings have been authorized to be canceled or removed.

---SECTION---121 Handling of Applications and Other Papers Bearing
Security Markings

Under Executive Order for Classified National Security Information
(Exec. Order No. 12,958, 60 FR 19,825 (April 20, 1995)) standards are
prescribed for the marking, handling, and care of official information
which requires safeguarding in the interest of security.

Papers marked as prescribed in the Executive Order, and showing that
such marking is applied by, or at the direction of, a government agency,
are accepted in patent applications. All applications or papers in the
Patent and Trademark Office bearing words such as "Secret" or
"Confidential" must be promptly referred to Group 3640 for clarification
or security treatment. Under no circumstances can any such application,
drawing, exhibit, or other paper be placed in public records, such as
the patented files, until all security markings have been considered and
declassified or otherwise explained.

Authorized security markings may be placed on the patent application
drawings when filed provided that such markings are outside the
illustrations and that they are removed when the material is
declassified. 37 CFR 1.84(v).

---SECTION---130 Examination of Secrecy Order Cases

All applications in which a Secrecy Order has been imposed are examined
in Group 3640. If the Order is imposed subsequent to the docketing of an
application in another group, the application will be transferred to
Group 3640.

Secrecy Order cases are examined for patentability as in other cases,
but may not be passed to issue; nor will an interference be declared
where one or more of the conflicting cases is classified or under
Secrecy Order. See MPEP Section  2309.06. When requested to do so by
examiners outside Group 3640, examiners in Group 3640 will conduct the
interference searches of those interference files containing briefcards
from classified or Secrecy Order cases.

In case of a final rejection, while such action must be properly replied
to, and an appeal, if filed, must be completed by the applicant to
prevent abandonment, such appeal will not be set for hearing by the
Board of Patent Appeals and Interferences until the Secrecy Order is
removed, unless specifically ordered by the Commissioner.

When a Secrecy Order case is in condition for allowance, a notice of
allowability (Form D-10) is issued, thus closing the prosecution. Any
amendments received thereafter are not entered or responded to until
such time as the Secrecy Order is rescinded. At such time, amendments
which are free from objection will be entered; otherwise they are denied
entry.

Due to the additional administrative burdens associated with handling
papers in Secrecy Order cases, the full statutory period for reply will
ordinarily be set for all Office actions issued on such cases.

Sometimes applications bearing security markings but no Secrecy Order
come up for examination. In this case, the examiner should require the
applicant to seek imposition of a Secrecy Order or authority to cancel
the markings. This should preferably be done with the first action and,
in any event, prior to final disposition of the application.

---SECTION---140 Foreign Filing Licenses

35 U.S.C. 184 Filing of application in foreign country.

Except when authorized by a license obtained from the Commissioner a
person shall not file or cause or authorize to be filed in any foreign
country prior to six months after filing in the United States an
application for patent or for the registration of a utility model,
industrial design, or model in respect of an invention made in this
country. A license shall not be granted with respect to an invention
subject to an order issued by the Commissioner pursuant to section 181
of this title without the concurrence of the head of the departments and
the chief officers of the agencies who caused the order to be issued.
The license may be granted retroactively where an application has been
filed abroad through error and without deceptive intent and the
application does not disclose an invention within the scope of section
181 of this title.

The term "application" when used in this chapter includes applications
and any modifications, amendments, or supplements thereto, or divisions
thereof.

The scope of a license shall permit subsequent modifications,
amendments, and supplements containing additional subject matter if the
application upon which the request for the license is based is not, or
was not, required to be made available for inspection under section 181
of this title and if such modifications, amendments, and supplements do
not change the general nature of the invention in a manner which would
require such application to be made available for inspection under such
section 181. In any case in which a license is not, or was not, required
in order to file an application in any foreign country, such subsequent
modifications, amendments, and supplements may be made, without a
license, to the application filed in the foreign country if the United
States application was not required to be made available for inspection
under section 181 and if such modifications, amendments, and supplements
do not, or did not, change the general nature of the invention in a
manner which would require the United States application to have been
made available for inspection under such section 181.

35 U.S.C. 185 Patent barred for filing without license.

Notwithstanding any other provisions of law any person, and his
successors, assigns, or legal representatives, shall not receive a
United States patent for an invention if that person, or his successors,
assigns, or legal representatives shall, without procuring the license
prescribed in section 184 of this title, have made, or consented to or
assisted another's making, application in a foreign country for a patent
or for the registration of a utility model, industrial design, or model
in respect of the invention. A United States patent issued to such a
person, his successors, assigns, or legal representatives shall be
invalid, unless the failure to procure such license was through error
and without deceptive intent, and the patent does not disclose subject
matter within the scope of section 181 of this title.

35 U.S.C. 186 Penalty.

Whoever, during the period or periods of time an invention has been
ordered to be kept secret and the grant of a patent thereon withheld
pursuant to section 181 of this title, shall, with knowledge of such
order and without due authorization, willfully publish or disclose or
authorize or cause to be published or disclosed the invention, or
material information with respect thereto, or whoever willfully, in
violation of the provisions of section 184 of this title, shall file or
cause or authorize to be filed in any foreign country an application for
patent or for the registration of a utility model, industrial design, or
model in respect of any invention made in the United States, shall, upon
conviction, be fined not more than $10,000 or imprisoned for not more
than two years, or both.

The amendments made to 35 U.S.C. 184, 185, and 186 by Public Law 100-418
apply to all United States patents granted before, on, or after August
23, 1988, to all applications for United States patents pending on or
filed after August 23, 1988, and to all licenses under 35 U.S.C. 184
granted before, on, or after August 23, 1988.

More specifically, paragraphs (c) and (d) of section 9101 of Public Law
100-418 read as follows:

Sec. 9101. INCREASED EFFECTIVENESS OF PATENT LAW                    +++       
(c)	REGULATIONS.-- The Commissioner of Patents and Trademarks shall
prescribe such regulations as may be necessary to implement the
amendments made by this section.

   (d)	EFFECTIVE DATE.-- (1) Subject to paragraphs (2), (3), and (4) of
this subsection, the amendments made by this section shall apply to all
United States patents granted before, on, or after the date of enactment
of this section, to all applications for United States patents pending
on or filed after such date of enactment, and to all licenses under
section 184 granted before, on, or after the date of enactment of this
section.

   (2)	The amendments made by this section shall not affect any final
decision made by a court or the Patent and Trademark Office before the
date of enactment of this section with respect to a patent or
application for patent, if no appeal from such decision is pending and
the time for filing an appeal has expired.

   (3)	No United States patent granted before the date of enactment of
this section shall abridge or affect the right of any person or his
successors in business who made, purchased, or used, prior to such date
of enactment, anything protected by the patent, to continue the use of,
or sell to others to be used or sold, the specific thing so made,
purchased, or used, if the patent claims were invalid or otherwise
unenforceable on a ground obviated by this section and the person made,
purchased, or used the specific thing in reasonable reliance on such
invalidity or unenforceability. If a person reasonably relied on such
invalidity or unenforceability, the court before which such matter is in
question may provide for the continued manufacture, use, or sale of the
thing made, purchased, or used as specified, or for the manufacture,
use, or sale of which substantial preparation was made before the date
of enactment of this section, and it may also provide for the continued
practice of any process practiced, or for the practice of which
substantial preparation was made, prior to the date of enactment of this
section, to the extent and under such terms as the court deems equitable
for the protection of investments made or business commenced before such
date of enactment.

   (4)	The amendments made by this section shall not affect the right of
any party in any case pending in court on the date of enactment of this
section to have its rights or liabilities --

   (A)	under any patent before the court, or

   (B)	under any patent granted after such date of enactment which is
related to the patent before the court by deriving priority right under
section 120 or 121 of title 35, United States Code, from a patent or an
application for patent common to both patents, determined on the basis
of the substantive law in effect before the date of enactment of this
section.

35 U.S.C. 187 Nonapplicability to certain persons

The prohibitions and penalties of this chapter shall not apply to any
officer or agent of the United States acting within the scope of his
authority, nor to any person acting upon his written instructions or
permission.

35 U.S.C. 188 Rules and regulations, delegation of power.

The Atomic Energy Commission, the Secretary of a defense department, the
chief officer of any department or agency of the Government designated
by the President as a defense agency of the United States, and the
Secretary of Commerce, may separately issue rules and regulations to
enable the respective department or agency to carry out the provisions
of this chapter, and may delegate any power conferred by this chapter.

37 CFR 5.11 License for filing in a foreign country an application on an
invention made in the United States or for transmitting an international
application.

(a) A license from the Commissioner of Patents and Trademarks under 35
U.S.C. 184 is required before filing any application for patent
including any modifications, amendments, or supplements thereto or
divisions thereof or for the registration of a utility model, industrial
design, or model, in a foreign patent office or any foreign patent
agency or any international agency other than the United States
Receiving Office, if the invention was made in the United States and:

(1) An application on the invention has been filed in the United States
less than six months prior to the date on which the application is to be
filed, or

(2) No application on the invention has been filed in the United States.

(b) The license from the Commissioner of Patents and Trademarks referred
to in paragraph (a) would also authorize the export of technical data
abroad for purposes relating to the preparation, filing or possible
filing and prosecution of a foreign patent application without
separately complying with the regulations contained in 22 CFR parts 121
through 130 (International Traffic in Arms Regulations of the Department
of State), 15 CFR part 779 (Regulations of the Office of Export
Administration, International Trade Administration, Department of
Commerce) and 10 CFR part 810 (Foreign Atomic Energy Programs of the
Department of Energy).

(c) Where technical data in the form of a patent application, or in any
form, is being exported for purposes related to the preparation, filing
or possible filing and prosecution of a foreign patent application,
without the license from the Commissioner of Patents and Trademarks
referred to in paragraphs (a) or (b) of this section, or on an invention
not made in the United States, the export regulations contained in 22
CFR parts 120 through 130 (International Traffic in Arms Regulations of
the Department of State), 15 CFR parts 768-799 (Export Administration
Regu lations of the Department of Commerce) and 10 CFR part 810
(Assistance to Foreign Atomic Energy Activities Regulations of the
Department of Energy) must be complied with unless a license is not
required because a United States application was on file at the time of
export for at least six months without a secrecy order under Section 
5.2 being placed thereon. The term "exported" means export as it is
defined in 22 CFR part 120, 15 CFR part 779 and activities covered by 10
CFR part 810.

(d) If a secrecy order has been issued under Section  5.2, an
application cannot be exported to, or filed in, a foreign country
(including an international agency in a foreign country), except in
accordance with Section  5.5.

(e) No license pursuant to paragraph (a) of this section is required:

(1) If the invention was not made in the United States, or

(2) If the corresponding United States application is not subject to a
secrecy order under Section  5.2, and was filed at least six months
prior to the date on which the application is filed in a foreign country
, or

(3) For subsequent modifications, amendments and supplements containing
additional subject matter to, or divisions of, a foreign patent
application if:

(i) A license is not, or was not, required under paragraph (e)(2) of
this section for the foreign patent application;

(ii) The corresponding United States application was not required to be
made available for inspection under 35 U.S.C. 181 and

(iii) Such modifications, amendments, and supplements do not, or did
not, change the general nature of the invention in a manner which would
require any corresponding United States application to be or have been
available for inspection under 35 U.S.C. 181.

(f) A license pursuant to paragraph (a) of this section can be revoked
at any time upon written notification by the Patent and Trademark
Office. An authorization to file a foreign patent application resulting
from the passage of six months from the date of filing of a United
States patent application may be revoked by the imposition of a secrecy
order.

37 CFR 5.12 Petition for license.

(a) Filing of an application for patent for inventions made in the
United States will be considered to include a petition for license under
35 U.S.C. 184 for the subject matter of the application. The filing
receipt will indicate if a license is granted. If the initial automatic
petition is not granted, a subsequent petition may be filed under
paragraph (b) of this section.

(b) Petitions for license should be presented in letter form, and must
include the petitioner's address and full instructions for delivery of
the requested license when it is to be delivered to other than the
petitioner. If expedited handling of the petition under this paragraph
is sought, the petition must also include the fee set forth in Section 
1.17(h).

37 CFR 5.13 Petition for license; no corresponding application.

If no corresponding national or international application has been filed
in the United States, the petition for license under Section  5.12(b)
must also be accompanied by a legible copy of the material upon which a
license is desired. This copy will be retained as a measure of the
license granted.

37 CFR 5.14 Petition for license; corresponding U.S. application.

(a) When there is a corresponding United States application on file, a
petition for license under Section  5.12(b) must also identify this
application by application number, filing date, inventor, and title, but
a copy of the material upon which the license is desired is not
required. The subject matter licensed will be measured by the disclosure
of the United States application.

(b) Two or more United States applications should not be referred to in
the same petition for license unless they are to be combined in the
foreign or international application, in which event the petition should
so state and the identification of each United States application should
be in separate paragraphs.

(c) Where the application to be filed or exported abroad contains matter
not disclosed in the United States application or applications,
including the case where the combining of two or more United States
applications introduces subject matter not disclosed in any of them, a
copy of the application as it is to be filed in the foreign country or
international application which is to be transmitted to a foreign
international or national agency for filing in the Receiving Office,
must be furnished with the petition. If, however, all new matter in the
foreign or international application to be filed is readily
identifiable, the new matter may be submitted in detail and the
remainder by reference to the pertinent United States application or
applications.

37 CFR 5.15 Scope of license.

(a) Applications or other materials reviewed pursuant to Section Section 
5.12 through 5.14, which were not required to be made available for
inspection by defense agencies under 35 U.S.C. 181, will be eligible for
a license of the scope provided in this paragraph. This license permits
subsequent modifications, amendments, and supplements containing
additional subject matter to, or divisions of, a foreign patent
application, if such changes to the application do not alter the general
nature of the invention in a manner which would require the United
States application to have been made available for inspection under 35
U.S.C. 181. Grant of this license authorizing the export and filing of
an application in a foreign country or the transmitting of an
international application to any foreign patent agency or international
patent agency when the subject matter of the foreign or international
application corresponds to that of the domestic application. This
license includes authority:

(1) To export and file all duplicate and formal application papers in
foreign countries or with international agencies;

(2) To make amendments, modifications, and supplements, including
divisions, changes or supporting matter consisting of the illustration,
exemplification, comparison, or explanation of subject matter disclosed
in the application; and

(3) To take any action in the prosecution of the foreign or
international application provided that the adding of subject matter or
taking of any action under paragraphs (a)(1) or (2) of this section does
not change the general nature of the invention disclosed in the
application in a manner which would require such application to have
been made available for inspection under 35 U.S.C. 181 by including
technical data pertaining to:

(i) Defense services or articles designated in the United States
Munitions List applicable at the time of foreign filing, the unlicensed
exportation of which is prohibited pursuant to the Arms Export Control
Act, as amended, and 22 CFR parts 121 through 130; or

(ii) Restricted Data, sensitive nuclear technology or technology useful
in the production or utilization of special nuclear material or atomic
energy, dissemination of which is subject to restrictions of the Atomic
Energy Act of 1954, as amended, and the Nuclear Non-Proliferation Act of
1978, as implemented by the regulations for Unclassified Activities in
Foreign Atomic Energy Programs, 10 CFR part 810, in effect at the time
of foreign filing.

(b) Applications or other materials which were required to be made
available for inspection under 35 U.S.C. 181 will be eligible for a
license of the scope provided in this paragraph. Grant of this license
authorizes the export and filing of an application in a foreign country
or the transmitting of an international application to any foreign
patent agency or international patent agency. Further, this license
includes authority to export and file all duplicate and formal papers in
foreign countries or with foreign and international patent agencies and
to make amendments, modifications, and supplements to, file divisions
of, and take any action in the prosecution of the foreign or
international application, provided subject matter additional to that
covered by the license is not involved.

(c) A license granted under Section  5.12(b) pursuant to Section  5.13
or Section  5.14 shall have the scope indicated in paragraph (a) of this
section, if it is so specified in the license. A petition, accompanied
by the required fee (Section  1.17(h)), may also be filed to change a
license having the scope indicated in paragraph (b) of this section to a
license having the scope indicated in paragraph (a) of this section. No
such petition will be granted if the copy of the material filed pursuant
to Section  5.13 or any corresponding United States application was
required to be made available for inspection under 35 U.S.C. 181. The
change in the scope of a license will be effective as of the date of the
grant of the petition.

(d) In those cases in which no license is required to file the foreign
application or transmit the international application, no license is
required to file papers in connection with the prosecution of the
foreign or international application not involving the disclosure of
additional subject matter.

(e) Any paper filed abroad or transmitted to an international patent
agency following the filing of a foreign or international application
which changes the general nature of the subject matter disclosed at the
time of filing in a manner which would require such application to have
been made available for inspection under 35 U.S.C. 181 or which involves
the disclosure of subject matter listed in paragraphs (a)(3)(i) or (ii)
of this section must be separately licensed in the same manner as a
foreign or international application. Further, if no license has been
granted under Section  5.12(a) on filing the corresponding United States
application, any paper filed abroad or with an international patent
agency which involves the disclosure of additional subject matter must
be licensed in the same manner as a foreign or international
application.

(f) Licenses separately granted in connection with two or more United
States applications may be exercised by combining or dividing the
disclosures, as desired, provided:

(1) Subject matter which changes the general nature of the subject
matter disclosed at the time of filing or which involves subject matter
listed in paragraphs (a)(3)(i) or (ii) of this section is not
introduced, and

(2) In the case where at least one of the licenses was obtained under
Section  5.12(b), additional subject matter is not introduced.

(g) A license does not apply to acts done before the license was
granted. See Section  5.25 for petitions for retroactive licenses.

37 CFR 5.18 Arms, ammunition, and implements of war.

(a) The exportation of technical data relating to arms, ammunition, and
implements of war generally is subject to the International Traffic in
Arms Regulations of the Department of State (22 CFR parts 120 through
130); the articles designated as arms, ammunitions, and implements of
war are enumerated in the U.S. Munitions List (22 CFR part 121).
However, if a patent applicant complies with regulations issued by the
Commissioner of Patents and Trademarks under 35 U.S.C. 184, no separate
approval from the Department of State is required unless the applicant
seeks to export technical data exceeding that used to support a patent
application in a foreign country. This exemption from Department of
State regulations is applicable regardless of whether a license from the
Commissioner is required by the provisions of Section Section  5.11 and
5.12 (22 CFR part 125).

(b) When a patent application containing subject matter on the Munitions
List (22 CFR part 121) is subject to a secrecy order under Section  5.2
and a petition is made under Section  5.5 for a modification of the
secrecy order to permit filing abroad, a separate request to the
Department of State for authority to export classified information is
not required (22 CFR part 125).

37 CFR 5.19 Export of technical data.

(a) Under regulations (15 CFR 770.10(j)) established by the Department
of Commerce, a license is not required in any case to file a patent
application or part thereof in a foreign country if the foreign filing
is in accordance with the regulations (Section Section   5.11 through
5.25) of the Patent and Trademark Office.

(b) An export license is not required for data contained in a patent
application prepared wholly from foreign-origin technical data where
such application is being sent to the foreign inventor to be executed
and returned to the United States for subsequent filing in the U.S.
Patent and Trademark Office (15 CFR 779A.3(e)).

37 CFR 5.20 Export of technical data relating to sensitive nuclear
technology.

Under regulations (10 CFR 810.7) established by the United States
Department of Energy, an application filed in accordance with the
regulations (Section Section  5.11 through 5.25) of the Patent and
Trademark Office and eligible for foreign filing under 35 U.S.C. 184, is
considered to be information available to the public in published form
and a generally authorized activity for the purposes of the Department
of Energy regulations.

37 CFR 5.25 Petition for retroactive license.

(a) A petition for a retroactive license under 35 U.S.C. 184 shall be
presented in accordance with Section  5.13 or Section  5.14(a), and
shall include:

(1) A listing of each of the foreign countries in which the unlicensed
patent application material was filed.

(2) The dates on which the material was filed in each country,

(3) A verified statement (oath or declaration) containing:

(i) An averment that the subject matter in question was not under a
secrecy order at the time it was filed abroad, and that it is not
currently under a secrecy order,

(ii) A showing that the license has been diligently sought after
discovery of the proscribed foreign filing, and

(iii) An explanation of why the material was filed abroad through error
and without deceptive intent without the required license under Section 
5.11 first having been obtained, and

(4) The required fee (Section  1.17(h)).

The above explanation must include a showing of facts rather than a mere
allegation of action through error and without deceptive intent. The
showing of facts as to the nature of the error should include statements
by those persons having personal knowledge of the acts regarding filing
in a foreign country and should be accompanied by copies of any
necessary supporting documents such as letters of transmittal or
instructions for filing. The acts which are alleged to constitute error
without deceptive intent should cover the period leading up to and
including each of the proscribed foreign filings.

(b) If a petition for a retroactive license is denied, a time period of
not less than thirty days shall be set, during which the petition may be
renewed. Failure to renew the petition within the set time period will
result in a final denial of the petition. A final denial of a petition
stands unless a petition is filed under Section  1.181 within two months
of the date of the denial. If the petition for a retroactive license is
denied with respect to the invention of a pending application and no
petition under Section  1.181 has been filed, a final rejection of the
application under 35 U.S.C. 185 will be made.

In the interests of national security, the United States government
imposes restrictions on the export of technical information. These
restrictions are administered by the Departments of Commerce, State,
and/or Energy depending on the subject matter involved. For the filing
of patent applications in foreign countries, the authority for export
control has been delegated to the Commissioner of Patents and
Trademarks.

There are two ways in which permission to file a patent application
abroad may be obtained: either a petition for a foreign filing license
may be granted (37 CFR 5.12) or an applicant may wait 6 months after
filing a patent application in the PTO (35 U.S.C. 184) at which time a
license on that subject matter is no longer required as long as no
Secrecy Order has been imposed. 37 CFR 5.11(e)(2).

There are several means by which a foreign filing license may be issued.
First, every U.S. origin application filed in the PTO is considered to
include an implicit petition for a foreign filing license. The grant of
a license is not immediate or even ensured. If the application is not
marked by the security screeners, the petition is granted. This is
indicated to the applicant by the presence on the filing receipt of the
phrase "Foreign Filing License Granted" and a date. The license becomes
effective on the date shown. Further, grant of this license is made of
record in the application file by means of a similar notation on the
file wrapper of the application below the "Foreign/PCT Applications"
data or on the PALM bib-data sheet. The scope of this license is quite
broad as set forth in 37 CFR 5.15(a).

Explicit petitions for foreign filing licenses will also be accepted in
accordance with 37 CFR 5.12(b). Applicants may be interested in such
petitions in cases:

(A) in which the filing receipt license is not granted;

(B) in which the filing receipt has not yet been issued (37 CFR 5.14(a)
or (b));

(C) in which there is no corresponding U.S. application (37 CFR 5.13);

(D) in which subject matter additional to that already licensed is
sought to be licensed (37 CFR 5.14(c) and 5.15(e)); or

(E) in which expedited handling is requested.

The scope of any license granted on these petitions is indicated on the
license. If applicants desire expedited processing (turn around time of
3 business days or less starting with the date of receipt of the
petition in Licensing and Review) or, if the petition covers subject
matter corresponding to a U.S. application in which the filing receipt
has not yet been issued, a fee is charged. See 37 CFR 1.17(h). There is
no fee for other petitions under 37 CFR 5.12(b).

Petitions under 37 CFR 5.14(a) or (b) as well as any license granted on
the petition are given paper numbers and endorsed on the file wrapper.
Petitions under 37 CFR 5.14(c) are not ordinarily made of record in the
file.

Applicants granted a license under 37 CFR 5.12(b) having the relatively
narrow scope indicated in 37 CFR 5.15(b) may petition under 37 CFR
5.15(c) to convert the license to the broad scope of 37 CFR 5.15(a). A
fee is charged for such a petition. See 37 CFR 1.17(h). If the petition
is granted, the change in the scope of the license is effective as of
that day.

Finally, a retroactive license may be sought if an unlicensed foreign
filing has occurred through error and without deceptive intent. However,
the requirements of 37 CFR 5.25 must be fulfilled in order for such a
petition to be granted. Note that licenses under 37 CFR 5.25 are only
made retroactive with respect to specific acts of foreign filing, and
therefore the countries, the actual dates of filing and the establishing
of the nature of the error must be provided for each act of proscribed
foreign filing for which a retroactive license is sought. Also, the
required verified statement must be in oath or declaration form.

Upon written notification from the Patent and Trademark Office, any
foreign filing license required by 37 CFR 5.11(a) may be revoked.
Ordinarily, revocation indicates that additional review of the licensed
subject matter revealed the need for referral of the application to the
appropriate defense agencies. Revocation of a filing receipt license (37
CFR 5.12(a)) does not necessarily mean that a petition under 37 CFR
5.12(b) for a license of narrower scope will not be granted. The
revocation becomes effective on the date on which the notice is mailed.
Foreign filings which occurred prior to revocation need not be abandoned
or otherwise specially treated; however, additional filings without a
license are not permitted unless 6 months have elapsed from the filing
of any corresponding U.S. application. Papers and other documents needed
in support of prosecution of foreign applications may be sent abroad if
they comply with any pertinent export regulations. Of course, if and
once a Secrecy Order is issued, the restrictions thereof must
immediately be observed.

Only the imposition of a Secrecy Order will cause revocation of the
authority which arises from 35 U.S.C. 184 to file a foreign patent
application 6 months or later after the date of filing of a
corresponding U.S. patent application.

The penalties for failing to obtain any necessary license to file a
patent application abroad are set forth in 35 U.S.C. 182, 35 U.S.C. 185,
and 35 U.S.C. 186 and include loss of patenting rights in addition to
possible fine or imprisonment.

---SECTION---150 Statements to DOE and NASA

37 CFR 1.14 Patent applications preserved in secrecy.

                  +++    

(c) Applications for patents which disclose or which appear to disclose,
or which purport to disclose, inventions or discoveries relating to
atomic energy are reported to the Department of Energy, which Department
will be given access to such applications, but such reporting does not
constitute a determination that the subject matter of each application
so reported is in fact useful or an invention or discovery or that such
application in fact discloses subject matter in categories specified by
sections 151(c) and 151(d) of the Atomic Energy Act of 1954, 68 Stat,
919; 42 U.S.C. 2181(c) and (d).

                  +++    

Title 42 United States Code, Section 2182 reads in part:

No patent for any invention or discovery, useful in the production or
utilization of special nuclear material or atomic energy, shall be
issued unless the applicant files with the application, or within thirty
days after request therefor by the Commissioner of Patents (unless the
Commission advises the Commissioner of Patents that its rights have been
determined and that accordingly no statement is necessary) a statement
under oath setting forth the full facts surrounding the making or
conception of the invention or discovery described in the application
and whether the invention or discovery was made or conceived in the
course of or under any contract, subcontract, or arrangement entered
into with or for the benefit of the Commission, regardless of whether
the contract, subcontract, or arrangement involved the expenditure of
funds by the Commission. The Commissioner of Patents shall as soon as
the application is otherwise in condition for allowance forward copies
of the application and the statement to the Commission.

Similarly, 42 U.S.C. 2457 provides in part:

(c)	 Patent application. No patent may be issued to any applicant other
than the Administrator for any invention which appears to the
Commissioner of Patents to have significant utility in the conduct of
aeronautical and space activities unless the applicant files with the
Commissioner, with the application or within thirty days after request
therefor by the Commissioner, a written statement executed under oath
setting forth the full facts concerning the circumstances under which
such invention was made and stating the relationship (if any) of such
invention to the performance of any work under any contract of the
Administration. Copies of each statement and application to which it
relates shall be transmitted forthwith by the Commissioner to the
Administrator.

Property rights statements to DOE or NASA may be filed at any time but
should be updated if necessary to accurately reflect property rights at
the time the application is allowed.

Shortly after filing, an informal request for a property rights
statement will be mailed to those applicants whose applications have
been marked by the security screeners as being of interest to DOE or
NASA. While no formal time period is set, a response by applicants
within 45 days will expedite processing. If the statement submitted
during this period is defective, another letter is sent from Licensing
and Review detailing the deficiencies and giving applicant another
opportunity to respond during this period of informal correspondence.

If no response to the initial so called 45-Day Letter is received or if
repeated efforts to correct a defective statement evidence an absence of
cooperation on the part of the applicant, a formal request for a
statement in accordance with the statutes will be made. A 30-day
statutory period for response is then set. There is no provision for an
extension of this time period. If no proper and timely statement is
received, the application will be held abandoned and the applicant so
notified. Such applications may be revived under the provisions of 35
U.S.C. 137. In re Rutan, 231 USPQ 864 (Comm'r Pat. 1986).

Any papers pertaining to property rights under section 152 of the Atomic
Energy Act, 42 U.S.C. 2182, (DOE), or section 305(c) or the National
Aeronautics and Space Act, 42 U.S.C. 2457, (NASA), that have not been
associated with the application file, or have not been made of record in
the file and processed by the Licensing and Review section, must be sent
to the Licensing and Review section immediately.

---SECTION---151 Content of the Statements

The law requires the statement to set forth "the full facts" surrounding
the conception and making of the invention. These facts should include
those which are unique to that invention. The use of form paragraphs or
printed forms which set forth only broad generalized statements of fact
is not ordinarily regarded as meeting the requirements of these
statutes.

The word "applicant" in both of these statutes has been construed to
mean the inventor or joint inventors in person. Accordingly, in the
ordinary situation, the statements must be signed by the inventor or the
joint inventors, if available. This construction is consistent with the
fact that no other person could normally be more knowledgeable of the
"full facts concerning the circumstances under which such invention was
made," (42 U.S.C. 2457) or, "full facts surrounding the making or
conception of the invention or discovery" (42 U.S.C. 2182). If a
petition under 37 CFR 1.48 for correction of inventorship is granted
during pendency of an application in which a property rights statement
has been filed, a supplemental statement executed by any added
inventor(s) is required and should promptly be filed with the Licensing
and Review section.

In instances where an applicant does not have firsthand knowledge
whether the invention involved work under any contract, subcontract, or
arrangement with or for the benefit of the Atomic Energy Commission, or
had any relationship to any work under any contract of the National
Aeronautics and Space Administration, and includes in his or her
statement information of this nature derived from others, his or her
statement should identify the source of his or her information.
Alternatively, the statement by the applicant could be accompanied by a
supplemental declaration or oath, as to the contractual matters, by the
assignee or other person, e.g., an employee thereof, who has the
requisite knowledge.

When an applicant is deceased or incompetent, or where it is shown to
the satisfaction of this Office that he or she refuses to furnish a
statement or cannot be reached after diligent efforts, declarations or
statements under oath setting forth the information required by the
statutes may be accepted from an officer or employee of the assignee who
has sufficient knowledge of the facts. The offer of such substitute
statements should be based on the actual unavailability of or refusal by
the applicant, rather than mere inconvenience. Where it is shown that
one of the joint inventors is deceased or unavailable, a statement by
all of the other inventor(s) may be accepted.

The following is an acceptable format for statements to DOE or NASA
assuming that no government funds or other considerations were involved
in the making or conception of the invention. It is important that the
information provided in the statement be an accurate reflection of the
fact situation at the time the statement is made. While the sample below
is in the form of a declaration, a sworn oath is equally acceptable.

Note that the statement must be in the form of an oath or declaration.
Further note that the statement must be signed by all the inventors. See
also the notice entitled "Statements Filed Under Atomic Energy Act and
NASA Act" published in 914 O.G. 1 (Sept. 4, 1973) for further
information.

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