Secrecy, Access, National Security & Foreign Filing (MPEP 100)

by patentbar on November 28, 2007 · 7 comments

in MPEP 0100


Information on the Status of an Application is only available to an inventor, attorney of record, assignee of record, or a person with written authority from previous; and includes only the following:

· whether the application is pending, abandoned, or patented;

· the application number and filing date; and

· whether one or more applications claims the benefit of the filing date of the application in question, and, if there are such other applications, the application numbers, filing dates, and their status

Power to Inspect Application – no one but the applicant, her legal representative, assignee, or attorney of record may have access to any pending application, except reissue applications, unless written authority is given from one of these parties or the Commissioner.

Right of Public to Inspect (patent and application files)

Issued Patentsafter a patent has been issued, all patent documents and papers relating to the case in the patent file are available for inspection by the public; other information open to the public includes: reissue applications; papers relating to reexamination proceedings; and any interference files, as long as the interference has terminated.

Pending Applications – Anyone can view the contents of the application without notice to the applicant, if:

1) the application has been published;

2) the Commissioner determines it is necessary for the proper conduct of PTO business;

3) the application falls in one of the categories (patent issued or a pending application which is incorporated by reference in a US patent);

4) written authority has been granted by the applicant, assignee, or attorney of record; or

5) the application is abandoned, unless 1) it is in the file jacket of a pending application under the CPA regulations, and 2) it is referred to in a US patent; or is referred to in a US app open to public inspection; or claims the benefit of the filing date of a US application open to public inspection; or the applicant has authorized the app to be open to public.

Provisional applications – access will only be given to parties with written authority from a named inventor, the assignee, or the attorney.

Reissues – all reissues filed after March 1, 1977 are inspectable by public.

Reexams – All requests for reexams are available to public.

Decisions of PTO – will be made public if: commissioner believes the decision has important precedent value, and none of the involved parties object within 2 months.

Petition – any member of public may petition to access a pending or abandoned application.

Secrecy, National Security and Foreign Filing

Secrecy Order – prevents disclosure of the subject matter to anyone without the express written consent of the Commissioner. Remains in effect for one year and can be renewed.

National Security – must always be filed in home country first

Foreign Filing Licenses – there are two ways to get permission to file abroad: 1) file a petition for a foreign filing license; or 2) wait six months after filing an application. A retroactive license may be pursued if an unlicensed foreign filing has occurred through error and without deceptive intent. In order to obtain a retroactive license, the applicant must provide a list of countries the application has been filed. A foreign filing license may be revoked by the PTO, and foreign filings that occurred prior to the revocation need not be abandoned.

1 patentbarNo Gravatar November 29, 2007 at 2:22 am

Some questions may deal with foreign filing licenses – and what to do when an application was filed in a foreign country without notifying the USPTO. Often asked in combination with non-publication request (MPEP 1100)

2 patentbarNo Gravatar March 6, 2008 at 2:06 am

Patents can and will issue while under a secrecy order. Prosecution continues and completes (just no one knows about it). So long as a secrecy order has not issued within 6 months, you can file abroad. You can file an explicit petition to file abroad, but it is unnecessary (you are automatically entitled after 6 mos.) If you accidentally file a foreign application before the 6 months (and have not filed a special petition), you can seek a retro-active license. If the 6 months period has expired, the foreign filing license can be revoked by the PTO at anytime. Foreign applications filed before the revocation need not be abandoned, but no new applications are allowed. (Remember that the PCT allows filing in another country up to one year after initial filing in the US RO to receive priority of your US filing date.)

3 AlanaNo Gravatar May 12, 2013 at 1:25 pm

Where does the MPEP say that a patent can issue while under secrecy order? What I have read seems to say that it can’t. This is what I found in MPEP 120:

“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 § 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 § 1.311 of this chapter, or take such other action as may then be warranted.”

4 patentbarNo Gravatar March 6, 2008 at 2:16 am

Substitute applications are not open for public inspection.

5 patentbarNo Gravatar March 6, 2008 at 2:18 am

Fax transmission is not allowed with any correspondence associated with a secrecy order.

6 AmyNo Gravatar September 5, 2012 at 11:27 am

I don’t quite understand the difference between “having access” and “having power to inspect”.
Why is it that a member from public has access to application file of a pending published application, but not permitted to inspect it?
Can someone explain? Thanks a lot!

7 mimiNo Gravatar September 25, 2012 at 11:17 pm

Nowhere “a pending published application”, it just says “a pending application”.

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