Chapter 100 Secrecy, Access, National Security, and Foreign

Filing

101 General (B) No information concerning published patent

102 Information as to Status of an applications shall be made available to the public except as the
Application Director determines.
103 Right of Public To Inspect Patent Files (C) Notwithstanding any other provision of law,
and Some Application Files a determination by the Director to release or not to release
104 Power to Inspect Application information concerning a published patent application shall be
final and nonreviewable.
105 Suspended or Excluded Practitioner
Cannot Inspect (2) EXCEPTIONS.—
106 Control of Inspection by Assignee (A) An application shall not be published if that
106.01 Rights of Assignee of Part Interest application is—
107-109 [Reserved] (i) no longer pending;
110 Confidential Nature of International (ii) subject to a secrecy order under section
Applications 181 ;
111-114 [Reserved] (iii) a provisional application filed under
115 Review of Applications for National section 111(b); or
Security and Property Rights Issues (iv) an application for a design patent filed
116-119 [Reserved] under chapter 16.
120 Secrecy Orders (B)(i) If an applicant makes a request upon
121 Handling of Applications under Secrecy filing, certifying that the invention disclosed in the application
Order and/or Bearing National Security has not and will not be the subject of an application filed in
another country, or under a multilateral international agreement,
Markings
that requires publication of applications 18 months after filing,
122-129 [Reserved] the application shall not be published as provided in paragraph
130 Examination of Secrecy Order Cases (1).
131-139 [Reserved] (ii) An applicant may rescind a request made
140 Foreign Filing Licenses under clause (i) at any time.
141-149 [Reserved] (iii) An applicant who has made a request
150 Statements to DOE and NASA under clause (i) but who subsequently files, in a foreign country
151 Content of the Statements or under a multilateral international agreement specified in
clause (i), an application directed to the invention disclosed in
101 General [R-07.2015] the application filed in the Patent and Trademark Office, shall
notify the Director of such filing not later than 45 days after the
35 U.S.C. 122 Confidential status of applications; date of the filing of such foreign or international application. A
publication of patent applications. failure of the applicant to provide such notice within the
prescribed period shall result in the application being regarded
(a) CONFIDENTIALITY.— Except as provided in as abandoned.
subsection (b), applications for patents shall be kept in
confidence by the Patent and Trademark Office and no (iv) If an applicant rescinds a request made
information concerning the same given without authority of the under clause (i) or notifies the Director that an application was
applicant or owner unless necessary to carry out the provisions filed in a foreign country or under a multilateral international
of an Act of Congress or in such special circumstances as may agreement specified in clause (i), the application shall be
be determined by the Director. published in accordance with the provisions of paragraph (1)
on or as soon as is practical after the date that is specified in
(b) PUBLICATION.— clause (i).
(1) IN GENERAL.— (v) If an applicant has filed applications in one
(A) Subject to paragraph (2), each application for or more foreign countries, directly or through a multilateral
a patent shall be published, in accordance with procedures international agreement, and such foreign filed applications
determined by the Director, promptly after the expiration of a corresponding to an application filed in the Patent and
period of 18 months from the earliest filing date for which a Trademark Office or the description of the invention in such
benefit is sought under this title. At the request of the applicant, foreign filed applications is less extensive than the application
an application may be published earlier than the end of such or description of the invention in the application filed in the
18-month period. Patent and Trademark Office, the applicant may submit a
redacted copy of the application filed in the Patent and
Trademark Office eliminating any part or description of the
invention in such application that is not also contained in any
100-1 Rev. 07.2015, October 2015
§ 101 MANUAL OF PATENT EXAMINING PROCEDURE

with any clerk or officer of any court of the United States, or in

of the corresponding applications filed in a foreign country. The any public office, or with any judicial or public officer of the
Director may only publish the redacted copy of the application United States, shall be fined under this title or imprisoned not
unless the redacted copy of the application is not received within more than three years, or both.
16 months after the earliest effective filing date for which a
(b) Whoever, having the custody of any such record,
benefit is sought under this title. The provisions of section 154(d)
proceeding, map, book, document, paper, or other thing, willfully
shall not apply to a claim if the description of the invention
and unlawfully conceals, removes, mutilates, obliterates,
published in the redacted application filed under this clause with
falsifies, or destroys the same, shall be fined under this title or
respect to the claim does not enable a person skilled in the art
imprisoned not more than three years, or both; and shall forfeit
to make and use the subject matter of the claim.
his office and be disqualified from holding any office under the
(c) PROTEST AND PRE-ISSUANCE OPPOSITION.— United States. As used in this subsection, the term “office” does
The Director shall establish appropriate procedures to ensure not include the office held by any person as a retired officer of
that no protest or other form of pre-issuance opposition to the the Armed Forces of the United States.
grant of a patent on an application may be initiated after
publication of the application without the express written consent
of the applicant. 37 CFR 1.11 Files open to the public.

(d) NATIONAL SECURITY.— No application for patent (a) The specification, drawings, and all papers relating to
shall be published under subsection (b)(1) if the publication or the file of: A published application; a patent; or a statutory
disclosure of such invention would be detrimental to the national invention registration are open to inspection by the public, and
security. The Director shall establish appropriate procedures to copies may be obtained upon the payment of the fee set forth
ensure that such applications are promptly identified and the in § 1.19(b)(2). If an application was published in redacted form
secrecy of such inventions is maintained in accordance with pursuant to § 1.217, the complete file wrapper and contents of
chapter 17 . the patent application will not be available if: The requirements
of paragraphs (d)(1), (d)(2), and (d)(3) of § 1.217 have been
(e) PREISSUANCE SUBMISSIONS BY THIRD met in the application; and the application is still pending. See
PARTIES.— § 2.27 of this title for trademark files.
(1) IN GENERAL.—Any third party may submit for *****
consideration and inclusion in the record of a patent application,
any patent, published patent application, or other printed
publication of potential relevance to the examination of the 37 CFR 1.14 Patent applications preserved in confidence.
application, if such submission is made in writing before the (a) Confidentiality of patent application information. Patent
earlier of— applications that have not been published under 35 U.S.C. 122(b)
(A) the date a notice of allowance under section are generally preserved in confidence pursuant to 35 U.S.C.
151 is given or mailed in the application for patent; or 122(a). Information concerning the filing, pendency, or subject
matter of an application for patent, including status information,
(B) the later of— and access to the application, will only be given to the public
(i) 6 months after the date on which the as set forth in § 1.11 or in this section.
application for patent is first published under section 122 by the (1) Records associated with patent applications (see
Office, or paragraph (g) of this section for international applications and
(ii) the date of the first rejection under section paragraph (j) of this section for international design applications)
132 of any claim by the examiner during the examination of the may be available in the following situations:
application for patent. (i) Patented applications and statutory invention
(2) OTHER REQUIREMENTS.—Any submission registrations. The file of an application that has issued as a
under paragraph (1) shall— patent or published as a statutory invention registration is
available to the public as set forth in § 1.11. A copy of the patent
(A) set forth a concise description of the asserted application-as-filed, the file contents of the application, or a
relevance of each submitted document; specific document in the file of such an application may be
(B) be accompanied by such fee as the Director provided upon request and payment of the appropriate fee set
may prescribe; and forth in § 1.19(b).
(C) include a statement by the person making such (ii) Published abandoned applications. The file
submission affirming that the submission was made in of an abandoned published application is available to the public
compliance with this section. as set forth in § 1.11(a). A copy of the application-as-filed, the
file contents of the published application, or a specific document
in the file of the published application may be provided to any
18 U.S.C. 2071 Concealment, removal, or mutilation person upon request and payment of the appropriate fee set forth
generally. in § 1.19(b).
(a) Whoever willfully and unlawfully conceals, removes, (iii) Published pending applications. A copy of
mutilates, obliterates, or destroys, or attempts to do so, or, with the application-as-filed, the file contents of the application, or
intent to do so takes and carries away any record, proceeding, a specific document in the file of a pending published application
map, book, paper, document, or other thing, filed or deposited may be provided to any person upon request and payment of

Rev. 07.2015, October 2015 100-2

 SECRECY, ACCESS, NATIONAL SECURITY, AND FOREIGN FILING § 101

the appropriate fee set forth in § 1.19(b). If a redacted copy of international publication of an international application under
the application was used for the patent application publication, PCT Article 21(2), or a publication of an international
the copy of the specification, drawings, and papers may be registration under Hague Agreement Article 10(3) of an
limited to a redacted copy. The Office will not provide access international design application designating the United States.
to the paper file of a pending application that has been published, The Office will not provide access to the paper file of a pending
except as provided in paragraph (c) or (i) of this section. application, except as provided in paragraph (c) or (i) of this
section.
(iv) Unpublished abandoned applications
(including provisional applications) that are identified or relied (vii) When a petition for access or a power to
upon. The file contents of an unpublished, abandoned inspect is required. Applications that were not published or
application may be made available to the public if the application patented, that are not the subject of a benefit claim under 35
is identified in a U.S. patent, a statutory invention registration, U.S.C. 119(e), 120, 121, 365(c), or 386(c) in an application that
a U.S. patent application publication, an international publication has issued as a U.S. patent, an application that has published as
of an international application under PCT Article 21(2), or a a statutory invention registration, a U.S. patent application
publication of an international registration under Hague publication, an international publication of an international
Agreement Article 10(3) of an international design application application under PCT Article 21(2), or a publication of an
designating the United States. An application is considered to international registration under Hague Agreement Article 10(3),
have been identified in a document, such as a patent, when the or are not identified in a U.S. patent, a statutory invention
application number or serial number and filing date, first named registration, a U.S. patent application publication, an
inventor, title, and filing date or other application specific international publication of an international application under
information are provided in the text of the patent, but not when PCT Article 21(2), or a publication of an international
the same identification is made in a paper in the file contents of registration under Hague Agreement Article 10(3) of an
the patent and is not included in the printed patent. Also, the international design application designating the United States,
file contents may be made available to the public, upon a written are not available to the public. If an application is identified in
request, if benefit of the abandoned application is claimed under the file contents of another application, but not the published
35 U.S.C. 119(e), 120, 121, 365(c), or 386(c) in an application patent application or patent itself, a granted petition for access
that has issued as a U.S. patent, or has published as a statutory (see paragraph (i)) or a power to inspect (see paragraph (c) of
invention registration, a U.S. patent application publication, an this section) is necessary to obtain the application, or a copy of
international publication of an international application under the application.
PCT Article 21(2), or a publication of an international
(2) Information concerning a patent application may
registration under Hague Agreement Article 10(3). A copy of
be communicated to the public if the patent application is
the application-as-filed, the file contents of the application, or
identified in a published patent document or in an application
a specific document in the file of the application may be
as set forth in paragraphs (a)(1)(i) through (a)(1)(vi) of this
provided to any person upon written request, and payment of
section. The information that may be communicated to the public
the appropriate fee (§ 1.19(b)).
(i.e., status information) includes:
(v) Unpublished pending applications (including
(i) Whether the application is pending, abandoned,
provisional applications) whose benefit is claimed. A copy of
or patented;
the file contents of an unpublished pending application may be
provided to any person, upon written request and payment of (ii) Whether the application has been published
the appropriate fee (§ 1.19(b)), if the benefit of the application under 35 U.S.C. 122(b);
is claimed under 35 U.S.C. 119(e), 120, 121, 365(c), or 386(c) (iii) The application “numerical identifier” which
in an application that has issued as a U.S. patent, or in an may be:
application that has published as a statutory invention
registration, a U.S. patent application publication, an (A) The eight-digit application number (the
international publication of an international application under two-digit series code plus the six-digit serial number); or
PCT Article 21(2), or a publication of an international (B) The six-digit serial number plus any one
registration under Hague Agreement Article 10(3). A copy of of the filing date of the national application, the international
the application-as-filed, or a specific document in the file of the filing date, or date of entry into the national stage; and
pending application may also be provided to any person upon
written request and payment of the appropriate fee (§ 1.19(b)). (iv) Whether another application claims the benefit
The Office will not provide access to the paper file of a pending of the application (i.e., whether there are any applications that
application, except as provided in paragraph (c) or (i) of this claim the benefit of the filing date under 35 U.S.C. 119(e), 120,
section. 121, 365, or 386 of the application), and if there are any such
applications, the numerical identifier of the application, the
(vi) Unpublished pending applications (including specified relationship between the applications (e.g.,
provisional applications) that are incorporated by reference or continuation), whether the application is pending, abandoned
otherwise identified . A copy of the application as originally or patented, and whether the application has been published
filed of an unpublished pending application may be provided under 35 U.S.C. 122(b).
to any person, upon written request and payment of the
*****
appropriate fee (§ 1.19(b)), if the application is incorporated by
reference or otherwise identified in a U.S. patent, a statutory
invention registration, a U.S. patent application publication, an

100-3 Rev. 07.2015, October 2015

§ 101 MANUAL OF PATENT EXAMINING PROCEDURE

Examiners, classifiers, and other U.S. Patent and

All U.S. Patent and Trademark Office employees Trademark Office employees who assist public
are legally obligated to preserve pending applications searchers by outlining or indicating a field of search,
for patents in confidence until they are published or should also bear in mind the critical importance of
patented in accordance with 35 U.S.C. 122 and 37 ensuring the confidentiality of information revealed
CFR 1.14. 35 U.S.C. 122 and 18 U.S.C. 2071 impose by a searcher when requesting field of search
statutory requirements which cover the handling of assistance. See MPEP § 1701. Statutory requirements
patent applications and related documents. and curbs regarding the use of information obtained
Suspension, removal, and even criminal penalties by an employee through government employment
may be imposed for violations of these statutes. are imposed by 5 U.S.C. 2635.701- 2635.703 and
18 U.S.C. 1905.
Any employee having custody of a patent application
or related documents will be responsible for Examiners, while holding interviews with attorneys
maintaining confidentiality and otherwise and applicants, should be careful to prevent
conforming with the requirements of law. No part exposures of files and drawings of other applicants.
of any application or paper related thereto should be
reproduced or copied except for official purposes. Extreme care should be taken to prevent inadvertent
Application files must not be displayed or handled and/or inappropriate disclosure of the filing date or
so as to permit perusal or inspection by any application number of any application. This applies
unauthorized member of the public. not only to Office actions but also to notes in the file
or in the artifact folder of IFW applications.
Whenever an application, or an artifact file in an
Image File Wrapper (IFW) application, is removed TELEPHONE AND IN-PERSON REQUESTS FOR
from the operating area having custody of the file, INFORMATION CONCERNING PENDING OR
a charge on the PALM system must be properly and ABANDONED APPLICATIONS
promptly made. Applications, artifact files, and 37 CFR 1.14 Patent applications preserved in confidence.
official papers for which there is no electronic file
(a) Confidentiality of patent application information. Patent
must not be placed in desk drawers or other locations applications that have not been published under 35 U.S.C. 122(b)
where they might be easily overlooked or are not are generally preserved in confidence pursuant to 35 U.S.C.
visible to authorized personnel. Interoffice mail must 122(a). Information concerning the filing, pendency, or subject
be sent in appropriate envelopes. matter of an application for patent, including status information,
and access to the application, will only be given to the public
as set forth in § 1.11 or in this section.
Official papers are accepted only at the Customer *****
Service Window, except for certain papers that have
been specifically exempted from the central delivery (2) Information concerning a patent application may
be communicated to the public if the patent application is
policy. See MPEP § 502. Appropriate corrective identified in a published patent document or in an application
action for IFW messages with faulty identifications as set forth in paragraphs (a)(1)(i) through (a)(1)(vi) of this
or incorrect routing should be taken at once to ensure section. The information that may be communicated to the public
the prompt receipt thereof at the appropriate (i.e., status information) includes:
destination. (i) Whether the application is pending, abandoned,
or patented;
All U.S. Patent and Trademark Office employees (ii) Whether the application has been published
should bear in mind at all times the critical under 35 U.S.C. 122(b);
importance of ensuring the confidentiality and (iii) The application “numerical identifier” which
accessibility of patent application files and related may be:
documents, and in addition to the specific procedures (A) The eight-digit application number (the
referred to above, should take all appropriate action two-digit series code plus the six-digit serial number); or
to that end. (B) The six-digit serial number plus any one
of the filing date of the national application, the international
filing date, or date of entry into the national stage; and

Rev. 07.2015, October 2015 100-4

 SECRECY, ACCESS, NATIONAL SECURITY, AND FOREIGN FILING § 101

(iv) Whether another application claims the benefit (2) If there is no patent practitioner of record,
of the application (i.e., whether there are any applications that ask the caller why he or she is entitled to information
claim the benefit of the filing date under 35 U.S.C. 119(e), 120, concerning the application. If the caller identifies
121, 365, or 386 of the application), and if there are any such himself or herself as inventor, an applicant or an
applications, the numerical identifier of the application, the
specified relationship between the applications (e.g.,
authorized representative of the assignee of record,
continuation), whether the application is pending, abandoned ask for the correspondence address of record and
or patented, and whether the application has been published inform caller that his or her association with the
under 35 U.S.C. 122(b). 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 inventor, applicant or an
Except as provided in 35 U.S.C. 122(b), no
authorized representative of the assignee of record
information concerning pending or abandoned patent
then status information may only be given pursuant
applications (except applications which have been
to MPEP § 102.
published, reissue applications and reexamination
proceedings) may be given to the public without (B) Verify that information concerning the
appropriate written authorization. See 35 U.S.C. 122 application can be released by checking PALM or
and 37 CFR 1.14. the application file.
(1) If the caller stated there was a patent
When handling an incoming telephone call or an practitioner of record, PALM intranet should be used
in-person request for information regarding an to verify the registration number given or to obtain
unpublished pending or abandoned patent the registration number of a patent practitioner of
application, no information should be disclosed until record. Then PALM intranet (using the registration
the identity of the requester can be adequately number) should be used to obtain a telephone
verified as set forth below. Particular care must be number for a patent practitioner of record.
exercised when a request is made for the publication
(2) If the caller identified himself or herself
date or publication number, or issue date and patent
as an inventor, applicant or an authorized
number assigned to a pending patent application. If
representative of the assignee of record, PALM
the publication or issue date is later than the current
intranet should be used to verify the correspondence
date (i.e., the date of the request), such information
address of record. PALM intranet should be used to
may be given only to the applicant, an inventor, the
determine if there is a patent practitioner of record.
assignee of record, or the attorney or agent of record.
If there is a patent practitioner of record, their
telephone number can be obtained from PALM
The following procedure should be followed before
intranet.
any information about an unpublished pending or
abandoned patent application is given over the (C) Return the call using the telephone number
telephone: as specified below.
(1) If a patent practitioner is of record in the
(A) Obtain the caller’s full name, the application application, information concerning the application
number, and the caller’s telephone number. Ask the should only be released by calling the patent
caller if there is a patent practitioner (attorney or practitioner's telephone number obtained from
agent) of record. PALM intranet.
(1) If there is a patent practitioner of record, (2) If the inventor, applicant or an authorized
ask for his or her registration number. If the representative of the assignee of record requests
registration number is not known, ask for the name information, and there is no patent practitioner of
of the patent practitioner of record. Inform the caller record and the correspondence address of record has
that a patent practitioner of record will be called after been verified, information concerning the application
verification of his/her identity and that information can be released to the caller using the telephone
concerning the application will be released to that number given by the caller. If the caller’s association
patent practitioner. with the application cannot be verified, no

100-5 Rev. 07.2015, October 2015

§ 102 MANUAL OF PATENT EXAMINING PROCEDURE

information concerning the application will be Agreement Article 10(3) of an international design application
released. However, the caller should be informed designating the United States. An application is considered to
that the caller’s association with the application have been identified in a document, such as a patent, when the
could not be verified. application number or serial number and filing date, first named
inventor, title, and filing date or other application specific
In handling an in-person request, ask the requester information are provided in the text of the patent, but not when
the same identification is made in a paper in the file contents of
to wait while verifying their identification as in (B)
the patent and is not included in the printed patent. Also, the
above. file contents may be made available to the public, upon a written
request, if benefit of the abandoned application is claimed under
102 Information as to Status of an 35 U.S.C. 119(e) ,120 , 121 , 365(c), or 386(c) in an application
that has issued as a U.S. patent, or has published as a statutory
Application [R-07.2015] invention registration, a U.S. patent application publication, an
international publication of an international application under
37 CFR 1.14 Patent applications preserved in confidence. PCT Article 21(2), or a publication of an international
(a) Confidentiality of patent application information. Patent registration under Hague Agreement Article 10(3). A copy of
applications that have not been published under 35 U.S.C. 122(b) the application-as-filed, the file contents of the application, or
are generally preserved in confidence pursuant to 35 U.S.C. a specific document in the file of the application may be
122(a). Information concerning the filing, pendency, or subject provided to any person upon written request and payment of the
matter of an application for patent, including status information, appropriate fee (§ 1.19(b) ).
and access to the application, will only be given to the public (v) Unpublished pending applications (including
as set forth in § 1.11 or in this section. provisional applications) whose benefit is claimed. A copy of
(1) Records associated with patent applications (see the file contents of an unpublished pending application may be
paragraph (g) of this section for international applications and provided to any person, upon written request and payment of
paragraph (j) of this section for international design applications) the appropriate fee (§ 1.19(b)), if the benefit of the application
may be available in the following situations: is claimed under 35 U.S.C. 119(e), 120, 121, 365(c), or 386(c)
in an application that has issued as a U.S. patent, or in an
(i) Patented applications and statutory invention application that has published as a statutory invention
registrations. The file of an application that has issued as a registration, a U.S. patent application publication, an
patent or published as a statutory invention registration is international publication of an international application under
available to the public as set forth in §1.11(a). A copy of the PCT Article 21(2), or a publication of an international
patent application-as-filed, the file contents of the application, registration under Hague Agreement Article 10(3). A copy of
or a specific document in the file of such an application may be the application-as-filed or a specific document in the file of the
provided upon request and payment of the appropriate fee set pending application may also be provided to any person upon
forth in § 1.19(b). written request and payment of the appropriate fee (§ 1.19(b)).
(ii) Published abandoned applications. The file The Office will not provide access to the paper file of a pending
of an abandoned published application is available to the public application, except as provided in paragraph (c) or (i) of this
as set forth in §1.11(a) . A copy of the application-as-filed, the section.
file contents of the published application, or a specific document (vi) Unpublished pending applications (including
in the file of the published application may be provided to any provisional applications) that are incorporated by reference or
person upon request and payment of the appropriate fee set forth otherwise identified. A copy of the application as originally
in § 1.19(b) . filed of an unpublished pending application may be provided
(iii) Published pending applications. A copy of to any person, upon written request and payment of the
the application-as-filed, the file contents of the application, or appropriate fee (§ 1.19(b)), if the application is incorporated by
a specific document in the file of a pending published application reference or otherwise identified in a U.S. patent, a statutory
may be provided to any person upon request and payment of invention registration, a U.S. patent application publication, an
the appropriate fee set forth in § 1.19(b) . If a redacted copy of international publication of an international application under
the application was used for the patent application publication, PCT Article 21(2), or a publication of an international
the copy of the specification, drawings, and papers may be registration under Hague Agreement Article 10(3) of an
limited to a redacted copy. The Office will not provide access international design application designating the United States.
to the paper file of a pending application that has been published, The Office will not provide access to the paper file of a pending
except as provided in paragraph (c) or (i) of this section. application, except as provided in paragraph (c) or (i) of this
section.
(iv) Unpublished abandoned applications
(including provisional applications) that are identified or relied (vii) When a petition for access or a power to
upon. The file contents of an unpublished, abandoned inspect is required. Applications that were not published or
application may be made available to the public if the application patented, that are not the subject of a benefit claim under 35
is identified in a U.S. patent, a statutory invention registration, U.S.C. 119(e), 120, 121, 365(c), or 386(c) in an application that
a U.S. patent application publication, an international publication has issued as a U.S. patent, an application that has published as
of an international application under PCT Article 21(2) , or a a statutory invention registration, a U.S. patent application
publication of an international registration under Hague publication, an international publication of an international

Rev. 07.2015, October 2015 100-6

 SECRECY, ACCESS, NATIONAL SECURITY, AND FOREIGN FILING § 102

(D) whether another application claims the

application under PCT Article 21(2) , or a publication of an
benefit of the application (i.e., whether there are any
international registration under Hague Agreement Article 10(3),
or are not identified in a U.S. patent, a statutory invention applications that claim the benefit of the filing date
registration, a U.S. patent application publication, an under 35 U.S.C. 119(e), 120, 121, 365, or 386 of the
international publication of an international application under application), and if there are any such applications,
PCT Article 21(2) , or a publication of an international status information therefor as set forth in 37 CFR
registration under Hague Agreement Article 10(3) of an
international design application designating the United States,
1.14(a)(2)(iv).
are not available to the public. If an application is identified in
A requester seeking status information regarding
the file contents of another application, but not the published
patent application or patent itself, a granted petition for access an application should check the Patent Application
(see paragraph (i)) or a power to inspect (see paragraph (c) of Information Retrieval (PAIR) system on the USPTO
this section) is necessary to obtain the application, or a copy of website at www.uspto.gov/learning-and-resources/
the application. support-centers/patent-electronic-business-center.
(2) Information concerning a patent application may Alternatively, the requester may contact the File
be communicated to the public if the patent application is Information Unit (see MPEP § 1730). The File
identified in a published patent document or in an application
as set forth in paragraphs (a)(1)(i) through (a)(1)(vi) of this
Information Unit (FIU) will check the relevant Office
section. The information that may be communicated to the public records and will inform the requester whether the
(i.e., status information) includes: application has been published or has issued as a
(i) Whether the application is pending, abandoned, patent. If the application has been published, the FIU
or patented; will inform the requester of the publication number
(ii) Whether the application has been published and publication date, and if the application has issued
under 35 U.S.C. 122(b); as a patent, the patent number, issue date and
(iii) The application “numerical identifier” which classification. If the application has not been
may be: published, but is pending or abandoned then the FIU
(A) The eight-digit application number (the should determine whether the requester is:
two-digit series code plus the six-digit serial number); or
(B) The six-digit serial number plus any one
(1) the applicant;
of the filing date of the national application, the international (2) a patent practitioner of record;
filing date, or date of entry into the national stage; and
(3) the assignee or an assignee of an undivided
(iv) Whether another application claims the benefit
of the application (i.e., whether there are any applications that part interest;
claim the benefit of the filing date under 35 U.S.C. 119(e), 120, (4) the inventor or a joint inventor; or
121, 365, or 386 of the application), and if there are any such
applications, the numerical identifier of the application, the (5) a registered attorney or agent named in the
specified relationship between the applications (e.g., papers accompanying the application papers filed
continuation), whether the application is pending, abandoned
or patented, and whether the application has been published
under 37 CFR 1.53 or the national stage documents
under 35 U.S.C. 122(b). filed under 37 CFR 1.495, if a power of attorney has
***** not been appointed under 37 CFR 1.32.
If the requester is any of (1) - (5) as set forth above,
Status information of an application means only the or if the application contains written authority
following information: granting access to the requester signed by any of (1)
- (5) as set forth above, then the requester is entitled
(A) whether the application is pending, to status information. See 37 CFR 1.14(c) and MPEP
abandoned, or patented; § 104 for additional information pertaining to who
can provide written authority granting access to such
(B) whether the application has been published; information. If the requester is inquiring about
(C) the application number or the serial number whether a reply was received or when an Office
plus any one of the filing date of the national action can be expected, the requester should be
application, the international filing date or the date directed to call the Technology Center (TC) to which
of entry into the national stage; and the application is assigned. The assignment of an

100-7 Rev. 07.2015, October 2015

§ 102 MANUAL OF PATENT EXAMINING PROCEDURE

application to a TC can be determined from PALM should be used to determine whether the application
intranet. is pending or abandoned. Alternatively, PALM
intranet may be used with the patent number for
If the requester is not any of (1) - (5) or a person continuity data for the patent. Other information
with written authority from any of (1) - (5) as set contained on the screen, such as whether the
forth above, and the application is (1) identified by application is a Continuation-in-Part (CIP),
application number (or serial number and filing date) continuation or divisional application, the date of
in a published patent document, or (2) an application abandonment of the application, and the issue date,
claiming the benefit of the filing date of an may be confidential information and should not be
application identified by application number (or communicated. As to the extent of the chain of
serial number and filing date) in a published patent applications for which status information is available,
document, then a written request including a copy the rule applies only to subsequent and not prior
of a published patent document (United States or applications.
foreign) which refers to the specific application must
be provided when requesting status information for Furthermore, if the requester is not any of (1) - (5)
the application. If the published patent document is or a person with written authority from any of (1) -
not in English, then a translation of the pertinent part (5) as set forth above, but the application is a national
thereof must also be included. The published patent stage application or any application claiming the
document may be presented in person to the FIU or benefit of the filing date of a published international
in written correspondence to the U.S. Patent and application and the United States of America has
Trademark Office, for example, by facsimile been indicated as a Designated State in the
transmission. Any written correspondence must international application, pursuant to 37 CFR
include a return address or facsimile number. If the 1.14(a)(2)(iv), the requester is entitled to status
application is referred to by application number or information for the national stage application as well
serial number and filing date in a published patent as any application claiming the benefit of the filing
document (e.g., a U.S. patent, a statutory invention date of the published international application. A
registration, a U.S. patent application publication, copy of the first page of the published international
an international application publication or an application or of the corresponding page of the PCT
international design application), or in a U.S. Gazette must be supplied with the status request.
application open to public inspection, pursuant to The status request should be made in writing to the
37 CFR 1.14(a), the requester is entitled to status International Patent Legal Administration (see MPEP
information for the application. (The published § 1730). Alternatively, inquiries relating to
patent document will at least identify the application applications claiming the benefit of the filing date
from which the patent itself was issued.) PALM of a published international application may be
intranet should be used to determine the status of directed to the PCT Help desk. Only the serial
the application. If the requester asks whether there number and filing date, or application number, as
are any applications on file which claim the benefit well as whether the application is pending,
of the filing date of the identified application, abandoned, or patented may be given for the national
pursuant to 37 CFR 1.14(a)(2)(iv), status information stage application and for any applications claiming
(application number, filing date and whether the the benefit of the filing date of the referenced
application is pending, abandoned or patented) for published international application. Other
the applications claiming benefit of the identified information contained on the continuity data screen,
application may be given to the requester as well. such as whether the application is a CIP, continuation
PALM intranet should be used to determine the or divisional application, the date of abandonment
application number and filing date of any of the application and issue date may be confidential
applications claiming the benefit of the filing date information and should not be communicated.
of the identified application. The requester should
be informed of the national applications listed in the If the requester is not any of (1) - (5) or a person
“child” section of the screen. If the child application with written authority from any of (1) - (5) as set
is not shown to have been patented , PALM intranet forth above, but the application is an international

Rev. 07.2015, October 2015 100-8

 SECRECY, ACCESS, NATIONAL SECURITY, AND FOREIGN FILING § 103

design application maintained by the Office in its record, name of the attorney or agent of record, and examining
group to which the reissue application is assigned.
capacity as a designated office (37 CFR 1.1003) for
national processing, pursuant to 37 CFR (c) All requests for reexamination for which all the
requirements of § 1.510 or § 1.915 have been satisfied will be
1.14(a)(2)(iv), the requester is entitled to status announced in the Official Gazette. Any reexaminations at the
information for the international design application initiative of the Director pursuant to § 1.520 will also be
as well as any application claiming the benefit of announced in the Official Gazette. The announcement shall
the filing date of the published international design include at least the date of the request, if any, the reexamination
request control number or the Director initiated order control
application. With respect to an international design
number, patent number, title, class and subclass, name of the
application maintained by the Office in its capacity inventor, name of the patent owner of record, and the examining
as an office of indirect filing (37 CFR 1.1002), status group to which the reexamination is assigned.
information may be made available where contained (d) All papers or copies thereof relating to a reexamination
in the file of the international design application proceeding which have been entered of record in the patent or
maintained by the Office for national processing. reexamination file are open to inspection by the general public,
and copies may be furnished upon paying the fee therefor.
STATUS LOCATION INFORMATION FOR (e) Except as prohibited in § 41.6(b), § 42.14 or §
OFFICE PERSONNEL 42.410(b), the file of any interference or trial before the Patent
Trial and Appeal Board is open to public inspection and copies
of the file may be obtained upon payment of the fee therefor.
When it is desired to determine the current location
or status of an application, Office personnel should
37 CFR 1.14 Patent applications preserved in confidence.
use PALM. If the application is an Image File
Wrapper (IFW) application, no location is associated (a) Confidentiality of patent application information. Patent
applications that have not been published under 35 U.S.C. 122(b)
with the file. are generally preserved in confidence pursuant to 35 U.S.C.
122(a). Information concerning the filing, pendency, or subject
Office personnel requesting status/location matter of an application for patent, including status information,
information on applications prior to 07 series and access to the application, will only be given to the public
as set forth in § 1.11 or in this section.
applications that are not in the PALM system should
contact the FIU (see MPEP § 1730) where the (1) Records associated with patent applications (see
paragraph (g) of this section for international applications and
numerical index records of the above mentioned paragraph (j) of this section for international design applications)
applications are maintained. may be available in the following situations:
(i) Patented applications and statutory invention
103 Right of Public To Inspect Patent Files registrations. The file of an application that has issued as a
and Some Application Files [R-07.2015] patent or published as a statutory invention registration is
available to the public as set forth in §1.11(a). A copy of the
37 CFR 1.11 Files open to the public. patent application-as-filed, the file contents of the application,
or a specific document in the file of such an application may be
(a) The specification, drawings, and all papers relating to provided upon request and payment of the appropriate fee set
the file of: A published application; a patent; or a statutory forth in § 1.19(b).
invention registration are open to inspection by the public, and
copies may be obtained upon the payment of the fee set forth (ii) Published abandoned applications. The file
in § 1.19(b)(2). If an application was published in redacted form of an abandoned published application is available to the public
pursuant to § 1.217, the complete file wrapper and contents of as set forth in § 1.11(a). A copy of the application-as-filed, the
the patent application will not be available if: The requirements file contents of the published application, or a specific document
of paragraphs (d)(1), (d)(2), and (d)(3) of § 1.217 have been in the file of the published application may be provided to any
met in the application; and the application is still pending. See person upon request and payment of the appropriate fee set forth
§ 2.27 of this title for trademark files. in § 1.19(b).

(b) All reissue applications, all applications in which the (iii) Published pending applications. A copy of
Office has accepted a request to open the complete application the application-as-filed, the file contents of the application, or
to inspection by the public, and related papers in the application a specific document in the file of a pending published application
file, are open to inspection by the public, and copies may be may be provided to any person upon request and payment of
furnished upon paying the fee therefor. The filing of reissue the appropriate fee set forth in § 1.19(b). If a redacted copy of
applications, other than continued prosecution applications under the application was used for the patent application publication,
§1.53(d) of reissue applications, will be announced in the the copy of the specification, drawings, and papers may be
Official Gazette. The announcement shall include at least the limited to a redacted copy. The Office will not provide access
filing date, reissue application and original patent numbers, title, to the paper file of a pending application that has been published,
class and subclass, name of the inventor, name of the owner of except as provided in paragraph (c) or (i) of this section.

100-9 Rev. 07.2015, October 2015

§ 103 MANUAL OF PATENT EXAMINING PROCEDURE

(iv) Unpublished abandoned applications (vii) When a petition for access or a power to
(including provisional applications) that are identified or relied inspect is required. Applications that were not published or
upon. The file contents of an unpublished, abandoned patented, that are not the subject of a benefit claim under 35
application may be made available to the public if the application U.S.C. 119(e), 120, 121, 365, or 386(c) in an application that
is identified in a U.S. patent, a statutory invention registration, has issued as a U.S. patent, an application that has published as
a U.S. patent application publication, an international publication a statutory invention registration, a U.S. patent application
of an international application under PCT Article 21(2), or a publication, an international publication of an international
publication of an international registration under Hague application under PCT Article 21(2) , or a publication of an
Agreement Article 10(3) of an international design application international registration under Hague Agreement Article 10(3),
designating the United States. An application is considered to or are not identified in a U.S. patent, a statutory invention
have been identified in a document, such as a patent, when the registration, a U.S. patent application publication, an
application number or serial number and filing date, first named international publication of an international application under
inventor, title, and filing date or other application specific PCT Article 21(2), or a publication of an international
information are provided in the text of the patent, but not when registration under Hague Agreement Article 10(3) of an
the same identification is made in a paper in the file contents of international design application designating the United States,
the patent and is not included in the printed patent. Also, the are not available to the public. If an application is identified in
file contents may be made available to the public, upon a written the file contents of another application, but not the published
request, if benefit of the abandoned application is claimed under patent application or patent itself, a granted petition for access
35 U.S.C. 119(e), 120, 121, 365, or 386(c) in an application (see paragraph (i)) or a power to inspect (see paragraph (c) of
that has issued as a U.S. patent, or has published as a statutory this section) is necessary to obtain the application, or a copy of
invention registration, a U.S. patent application publication, an the application.
international publication of an international application
(2) Information concerning a patent application may
underPCT Article 21(2), or a publication of an international
be communicated to the public if the patent application is
registration under Hague Agreement Article 10(3). A copy of
identified in a published patent document or in an application
the application-as-filed, the file contents of the application, or
as set forth in paragraphs (a)(1)(i) through (a)(1)(vi) of this
a specific document in the file of the application may be
section. The information that may be communicated to the public
provided to any person upon written request and payment of the
( i.e., status information) includes:
appropriate fee (§ 1.19(b)).
(i) Whether the application is pending, abandoned,
(v) Unpublished pending applications (including
or patented;
provisional applications) whose benefit is claimed. A copy of
the file contents of an unpublished pending application may be (ii) Whether the application has been published
provided to any person, upon written request and payment of under 35 U.S.C. 122(b);
the appropriate fee (§ 1.19(b)), if the benefit of the application (iii) The application “numerical identifier” which
is claimed under 35 U.S.C. 119(e), 120, 121, 365(c), or 386(c) may be:
in an application that has issued as a U.S. patent, or in an
application that has published as a statutory invention (A) The eight-digit application number (the
registration, a U.S. patent application publication, an two-digit series code plus the six-digit serial number); or
international publication of an international application (B) The six-digit serial number plus any one
underPCT Article 21(2), or a publication of an international of the filing date of the national application, the international
registration under Hague Agreement Article 10(3). A copy of filing date, or date of entry into the national stage; and
the application-as-filed or a specific document in the file of the
pending application may also be provided to any person upon (iv) Whether another application claims the benefit
written request and payment of the appropriate fee (§ 1.19(b)). of the application (i.e., whether there are any applications that
The Office will not provide access to the paper file of a pending claim the benefit of the filing date under 35 U.S.C. 119(e), 120,
application, except as provided in paragraph (c) or (i) of this 121, 365, or 386 of the application), and if there are any such
section. applications, the numerical identifier of the application, the
specified relationship between the applications (e.g.,
(vi) Unpublished pending applications (including continuation), whether the application is pending, abandoned
provisional applications) that are incorporated by reference or or patented, and whether the application has been published
otherwise identified. A copy of the application as originally under 35 U.S.C. 122(b).
filed of an unpublished pending application may be provided
*****
to any person, upon written request and payment of the
appropriate fee (§ 1.19(b)), if the application is incorporated by
reference or otherwise identified in a U.S. patent, a statutory
invention registration, a U.S. patent application publication, an I. ACCESS TO IMAGE FILE WRAPPER (IFW)
international publication of an international application under APPLICATIONS
PCT Article 21(2), or a publication of an international
registration under Hague Agreement Article 10(3) of an The Image File Wrapper (IFW) system uses image
international design application designating the United States.
The Office will not provide access to the paper file of a pending technology to replace the paper processing of patent
application, except as provided in paragraph (c) or (i) of this applications in the Office. Paper components of these
section.

Rev. 07.2015, October 2015 100-10

 SECRECY, ACCESS, NATIONAL SECURITY, AND FOREIGN FILING § 103

*****
application files (including the specification, oath
or declaration, drawings, information disclosure
statements, amendments, Office actions, and file If a patent application has been published pursuant
jacket notations) have been scanned to create to 35 U.S.C. 122(b), then a copy of the specification,
electronic image files. For patent applications in the drawings, and all papers relating to the file of that
IFW system, the IFW file is the Official file and no published application (whether abandoned or
access is granted to the original paper document pending) may be provided to any person upon
sheets used to create the IFW file. All processing written request and payment of the fee set forth in
and examination is conducted using the electronic 37 CFR 1.19(b). See 37 CFR 1.14(a)(1)(ii) and (iii).
images instead of the paper source documents. Pursuant to 35 U.S.C. 374 and 35 U.S.C. 390, the
publication by the International Bureau of an
If an IFW file has been created for a patented international application under the PCT or an
application, published application, or an application international design application designating the
to which a patented or published application claims United States under the Hague Agreement is deemed
domestic priority, the IFW file (with the exception to be a publication under 35 U.S.C. 122(b). Note
of non-patent literature) is accessible through public that the U.S. is automatically designated in all
PAIR. All patent applications filed after June 30, international applications under the PCT filed on or
2003, have been scanned into the IFW system are after January 1, 2004.
available in public PAIR upon publishing or
patenting. Pending applications filed before June 30, If a redacted copy of the application was used for
2003, are scanned into IFW as incoming papers are the patent application publication, the copy of the
received in the Office. application will be limited to the redacted copy of
the application and the redacted materials provided
II. PUBLISHED APPLICATIONS under 37 CFR 1.217(d).
37 CFR 1.14 Patent applications preserved in confidence.
See paragraph I., above, for information pertaining
(a) Confidentiality of patent application information. Patent
applications that have not been published under 35 U.S.C. 122(b)
to access to Image File Wrapper (IFW) applications.
are generally preserved in confidence pursuant to 35 U.S.C. Published applications maintained in the IFW system
122(a). Information concerning the filing, pendency, or subject are available on the USPTO website in the public
matter of an application for patent, including status information, Patent Application Information Retrieval (PAIR)
and access to the application, will only be given to the public
system. If the published patent application is pending
as set forth in § 1.11 or in this section.
and it is not maintained in the IFW system, the paper
(1) Records associated with patent applications (see
application file itself will not be available to the
paragraph (g) of this section for international applications and
paragraph (j) of this section for international design applications) public for inspection. Only copies of the application
may be available in the following situations: file may be obtained pursuant to 37 CFR
***** 1.14(a)(1)(iii). If the published patent application is
abandoned, the entire application is available to the
(ii) Published abandoned applications. The file
of an abandoned published application is available to the public public for inspection and obtaining copies. See
as set forth in § 1.11(a). A copy of the application-as-filed, the 37 CFR 1.11(a).
file contents of the published application, or a specific document
in the file of the published application may be provided to any III. UNPUBLISHED ABANDONED AND PENDING
person upon request and payment of the appropriate fee set forth
APPLICATIONS (INCLUDING PROVISIONAL
in § 1.19(b).
APPLICATIONS) THAT ARE IDENTIFIED
(iii) Published pending applications. A copy of
the application-as-filed, the file contents of the application, or 37 CFR 1.14 Patent applications preserved in confidence.
a specific document in the file of a pending published application
may be provided to any person upon request and payment of (a) Confidentiality of patent application information. Patent
the appropriate fee set forth in § 1.19(b). If a redacted copy of applications that have not been published under 35 U.S.C. 122(b)
the application was used for the patent application publication, are generally preserved in confidence pursuant to 35 U.S.C.
the copy of the specification, drawings, and papers may be 122(a). Information concerning the filing, pendency, or subject
limited to a redacted copy. The Office will not provide access matter of an application for patent, including status information,
to the paper file of a pending application that has been published, and access to the application, will only be given to the public
except as provided in paragraph (c) or (i) of this section. as set forth in § 1.11 or in this section.

100-11 Rev. 07.2015, October 2015

§ 103 MANUAL OF PATENT EXAMINING PROCEDURE

(1) Records associated with patent applications (see

PCT Article 21(2), or a publication of an international
paragraph (g) of this section for international applications and
registration under Hague Agreement Article 10(3) of an
paragraph (j) of this section for international design applications)
international design application designating the United States.
may be available in the following situations:
The Office will not provide access to the paper file of a pending
***** application, except as provided in paragraph (c) or (i) of this
(iv) Unpublished abandoned applications section.
(including provisional applications) that are identified or relied *****
upon. The file contents of an unpublished, abandoned
application may be made available to the public if the application
is identified in a U.S. patent, a statutory invention registration, Abandoned applications meeting the requirements
a U.S. patent application publication, an international publication of 37 CFR 1.14(a)(1)(iv) and any application that is
of an international application under PCT Article 21(2), or a
publication of an international registration under Hague open to the public under 37 CFR 1.11 may be
Agreement Article 10(3) of an international design application obtained by any person upon written request to the
designating the United States. An application is considered to File Information Unit (FIU) without the specific
have been identified in a document, such as a patent, when the written authority of the inventor, applicant in an
application number or serial number and filing date, first named
application filed on or after September 16, 2012,
inventor, title, and filing date or other application specific
information are provided in the text of the patent, but not when assignee, attorney or agent of record or Director.
the same identification is made in a paper in the file contents of The following abandoned applications are available
the patent and is not included in the printed patent. Also, the from the FIU: (A) An abandoned application referred
file contents may be made available to the public, upon a written to in a U.S. patent application publication or U.S.
request, if benefit of the abandoned application is claimed under
35 U.S.C. 119(e), 120, 121, 365, or 386(c) in an application patent; and (B) a pending File Wrapper Continuation
that has issued as a U.S. patent, or has published as a statutory application (FWC) filed under former 37 CFR 1.62
invention registration, a U.S. patent application publication, an of an abandoned application that meets the
international publication of an international application under requirements of 37 CFR 1.14(a)(1)(iv). Under former
PCT Article 21(2), or a publication of an international
37 CFR 1.62(f), where access is permitted to an
registration under Hague Agreement Article 10(3). A copy of
the application-as-filed, the file contents of the application, or application within the file wrapper of a FWC
a specific document in the file of the application may be application, the applicant has waived the right to
provided to any person upon written request and payment of the keep all earlier filed applications in the same file
appropriate fee (§ 1.19(b)). wrapper in confidence.
(v) Unpublished pending applications (including
provisional applications) whose benefit is claimed. A copy of
37 CFR 1.14(a)(1)(i) relates only to United States
the file contents of an unpublished pending application may be
provided to any person, upon written request and payment of applications that are open to public inspection. See
the appropriate fee (§ 1.19(b)), if the benefit of the application 37 CFR 1.14(g)(3)-(5) for access to international
is claimed under 35 U.S.C. 119(e), 120, 121, 365(c), or 386(c) applications where the U.S. is designated. See also
in an application that has issued as a U.S. patent, or in an MPEP § 110. See 37 CFR 1.14(j) for access to
application that has published as a statutory invention
registration, a U.S. patent application publication, an
international design applications. If an abandoned
international publication of an international application under application is referred to in an international
PCT Article 21(2), or a publication of an international publication of an international application under
registration under Hague Agreement Article 10(3). A copy of PCT Article 21(2), or in a publication of an
the application-as-filed or a specific document in the file of the
international registration under Hague Agreement
pending application may also be provided to any person upon
written request and payment of the appropriate fee (§ 1.19(b)). Article 10(3), access to the abandoned application
The Office will not provide access to the paper file of a pending is available under 37 CFR 1.14(a)(1)(iv).
application, except as provided in paragraph (c) or (i) of this
section.
An abandoned non-IFW application identified in a
(vi) Unpublished pending applications (including U.S. patent application publication, U.S. patent or a
provisional applications) that are incorporated by reference or
U.S. application that is open to public inspection
otherwise identified. A copy of the application as originally
filed of an unpublished pending application may be provided may be ordered for inspection by any member of the
to any person, upon written request and payment of the public through the FIU. An abandoned file received
appropriate fee (§ 1.19(b)), if the application is incorporated by by a member of the public must be returned to the
reference or otherwise identified in a U.S. patent, a statutory charge counter in the FIU before closing the same
invention registration, a U.S. patent application publication, an
international publication of an international application under
day it is received. If the abandoned application is

Rev. 07.2015, October 2015 100-12

 SECRECY, ACCESS, NATIONAL SECURITY, AND FOREIGN FILING § 103

contained within a pending FWC application, the request, including a copy of the page of the patent
requester will generally be directed to the appropriate application publication, U.S. patent, published
Technology Center (TC) to inquire as to the international application, or published international
availability of the pending FWC application. If the registration including the incorporation by reference
pending FWC application is available, it will be or specific reference under 35 U.S.C. 119(e), 120,
forwarded to the FIU for the requester to pick-up. 121, 365, or 386 and the requisite fee set forth in 37
See paragraph I., above, for information pertaining CFR 1.19(b)(1), should be directed to the
to access to IFW applications. Certification Division. However, an incorporation
by reference that is made as part of a transmittal
The incorporation by reference of a pending letter for the application, or that is a part of the text
application in a U.S. patent application publication, of the application that has been canceled and which
a U.S. patent, a published international application does not appear as part of the printed patent, may
published in accordance with PCT Article 21(2), a not be relied upon to obtain a copy of the application
publication of an international registration under as originally filed. A petition for access with an
Hague Agreement Article 10(3), or a statutory explanation of special circumstances other than the
invention registration constitutes a special not-printed incorporation by reference will be
circumstance under 35 U.S.C. 122 warranting that required. See 37 CFR 1.14(a)(1)(vii).
a copy of the application-as-filed be provided upon
written request as provided in 37 CFR 1.14(a)(1)(vi). Copies of a patent application-as-filed and the
In addition, if a U.S. patent application publication, contents of a patent application file wrapper may be
a U.S. patent, a published international application, ordered on-line or requested by facsimile from the
or a published international registration claims Certification Division. Payment of the appropriate
benefit under 35 U.S.C. 119(e), 120, 121, 365, or fee under 37 CFR 1.19(b) may be made by USPTO
386 to a U.S. patent application, a copy of that Deposit Account, American Express®, Discover®,
application-as-filed may be provided upon written MasterCard®, or Visa® by any person having a right
request (see 37 CFR 1.14(a)(1)(v)), or be available to access to the originally filed application or patent.
through the public PAIR system if the application The Office does not provide for access to non-United
is maintained in the IFW system. A benefit claim in States applications.
an international design application that does not
designate the United States is not a claim under 35 Form PTO/SB/68 may be used to request access.
U.S.C. 119(e), 120, 121, 365 or 386. The written

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Rev. 07.2015, October 2015 100-14

SECRECY, ACCESS, NATIONAL SECURITY, AND FOREIGN FILING § 103

100-15 Rev. 07.2015, October 2015

§ 103 MANUAL OF PATENT EXAMINING PROCEDURE

IV. ACCESS WHERE PART OF AN APPLICATION (1) Records associated with patent applications (see
IS INCORPORATED BY REFERENCE IN A U.S. paragraph (g) of this section for international applications and
PATENT APPLICATION PUBLICATION OR A U.S. paragraph (j) of this section for international design applications)
PATENT may be available in the following situations:
*****
37 CFR 1.14(a)(1)(vi) permits a member of the (vii) When a petition for access or a power to
public, without a petition for access, to obtain a copy inspect is required. Applications that were not published or
of a pending application as originally filed, when patented, that are not the subject of a benefit claim under35
U.S.C. 119(e), 120, 121, 365(c), or 386(c) in an application that
the application is incorporated by reference in a U.S. has issued as a U.S. patent, an application that has published as
patent application publication or a U.S. patent, upon a statutory invention registration, a U.S. patent application
the filing of an appropriate request and the payment publication, an international publication of an international
of the required fee. However, if only part of the application under PCT Article 21(2) , or a publication of an
application is incorporated by reference, for example, international registration under Hague Agreement Article 10(3),
or are not identified in a U.S. patent, a statutory invention
where an application states, “the disclosure of a valve registration, a U.S. patent application publication, an
on page 5, lines 5-35, of application No. international publication of an international application under
XX/YYY,YYY, is hereby incorporated by PCT Article 21(2) , or a publication of an international
reference,” then a petition for access is required to registration under Hague Agreement Article 10(3) of an
international design application designating the United States,
obtain access to or a copy of the incorporated are not available to the public. If an application is identified in
material. Incorporation by reference of part of an the file contents of another application, but not the published
application in a U.S. patent application publication patent application or patent itself, a granted petition for access
or a U.S. patent constitutes a special circumstances (see paragraph (i)) or a power to inspect (see paragraph (c) of
under 35 U.S.C. 122(a) warranting that access to this section) is necessary to obtain the application, or a copy of
the application.
that part of the original disclosure of the application
*****
be granted on petition. The incorporation by
reference will be interpreted as a waiver of (i) Access or copies in other circumstances. The Office,
either sua sponte or on petition, may also provide access or
confidentiality of only that part of the original
copies of all or part of an application if necessary to carry out
disclosure as filed, and not the entire application file. an Act of Congress or if warranted by other special
In re Gallo, 231 USPQ 496 (Comm’r Pat. 1986). If circumstances. Any petition by a member of the public seeking
applicant objects to access to the entire application access to, or copies of, all or part of any pending or abandoned
file, applicant must file two copies of the information application preserved in confidence pursuant to paragraph (a)
of this section, or any related papers, must include:
incorporated by reference along with the objection.
In the example given, applicant would be required (1) The fee set forth in § 1.17(g); and
to provide two copies of page 5, lines 5-35 of the (2) A showing that access to the application is
XX/YYY,YYY application. Failure to provide the necessary to carry out an Act of Congress or that special
circumstances exist which warrant petitioner being granted
material within the time period provided will result access to all or part of the application.
in the entire application content (including *****
prosecution history) being made available to the
petitioner. The Office will not attempt to separate
the noted materials from the remainder of the Any interested party may file a petition,
application. Compare In re Marsh Eng’g. Co., 1913 accompanied by the petition fee, to the Director for
C.D. 183 (Comm’r Pat. 1913). access to an application. Inasmuch as the post office
address is necessary for the complete identification
V. PETITION FOR ACCESS BY THIRD PARTY of the petitioner, it should always be included
complete with ZIP Code number. In addition,
37 CFR 1.14 Patent applications preserved in confidence.
telephone and facsimile numbers should be provided
(a) Confidentiality of patent application information. Patent to expedite handling of the petition. Petitions for
applications that have not been published under 35 U.S.C. 122(b)
are generally preserved in confidence pursuant to 35 U.S.C.
access are handled in the Office of Patent Legal
122(a). Information concerning the filing, pendency, or subject Administration, unless the application is involved
matter of an application for patent, including status information, in an interference, derivation proceeding, or trial
and access to the application, will only be given to the public
as set forth in § 1.11 or in this section.

Rev. 07.2015, October 2015 100-16

 SECRECY, ACCESS, NATIONAL SECURITY, AND FOREIGN FILING § 103

before the Patent Trial and Appeal Board. See MPEP access would be to obtain power to inspect from an
§ 1002.02(b), item 21. assignee or inventor. See MPEP §§ 104 and 106.01.

The petition may be filed either with proof of service VI. ACCESS WHERE PATENT CLAIMS 35 U.S.C.
of copy upon the inventor, applicant in an application 119(e), 120, 121, 365(c), or 386(c) BENEFIT
filed on or after September 16, 2012, assignee of
37 CFR 1.14 Patent applications preserved in confidence.
record, or attorney or agent of record in the
application to which access is sought, or the petition (a) Confidentiality of patent application information. Patent
applications that have not been published under 35 U.S.C. 122(b)
may be filed in duplicate, in which case the duplicate are generally preserved in confidence pursuant to 35 U.S.C.
copy will be sent by the Office to the inventor, 122(a). Information concerning the filing, pendency, or subject
applicant in an application filed on or after matter of an application for patent, including status information,
September 16, 2012, assignee of record, or attorney and access to the application, will only be given to the public
as set forth in § 1.11 or in this section.
or agent of record in the application (hereinafter
“applicant”). A separate petition, with fee, must be (1) Records associated with patent applications (see
paragraph (g) of this section for international applications and
filed for each application file to which access is paragraph (j) of this section for international design applications)
desired. Each petition should show not only why may be available in the following situations:
access is desired, but also why petitioner believes *****
he or she is entitled to access. The applicant will
(iv) Unpublished abandoned applications
normally be given a limited period such as 3 weeks (including provisional applications) that are identified or relied
within which to state any objection to the granting upon. The file contents of an unpublished, abandoned
of the petition for access and reasons why it should application may be made available to the public if the application
be denied. If applicant states that he or she has no is identified in a U.S. patent, a statutory invention registration,
a U.S. patent application publication, an international publication
objection to the requested access, the petition will
of an international application under PCT Article 21(2) , or a
be granted. If objection is raised or applicant does publication of an international registration under Hague
not respond, the petition will be decided on the Agreement Article 10(3) of an international design application
record. If access is granted to the application, any designating the United States. An application is considered to
objections filed by the applicant will be available to have been identified in a document, such as a patent, when the
application number or serial number and filing date, first named
the petitioner since these papers are in the application inventor, title, and filing date or other application specific
file. If access to the application is denied, petitioner information are provided in the text of the patent, but not when
will not receive copies of any objections filed by the the same identification is made in a paper in the file contents of
applicant. A determination will be made whether the patent and is not included in the printed patent. Also, the
file contents may be made available to the public, upon a written
“special circumstances” are present which warrant
request, if benefit of the abandoned application is claimed under
a grant of access under 35 U.S.C. 122. See below 35 U.S.C. 119(e), 120, 121, 365(c), or 386(c) in an application
when the application is the basis of a claim for that has issued as a U.S. patent, or has published as a statutory
benefit of an earlier filing date under 35 U.S.C. 120 invention registration, a U.S. patent application publication, an
or part of the application is incorporated by reference international publication of an international application under
PCT Article 21(2) , or a publication of an international
in a United States patent. “Special circumstances” registration under Hague Agreement Article 10(3). A copy of
could be found where an applicant has relied upon the application-as-filed, the file contents of the application, or
his or her application as a means to interfere with a a specific document in the file of the application may be
competitor’s business or customers. See, e.g., In re provided to any person upon written request and payment of the
appropriate fee (§ 1.19(b)).
Crossman, 187 USPQ 367 (PTO Solicitor 1975);
and In re Trimless Cabinets, 128 USPQ 95 (v) Unpublished pending applications (including
provisional applications) whose benefit is claimed. A copy of
(Comm’r Pat. 1960). Furthermore, “special
the file contents of an unpublished pending application may be
circumstances” could be found where an attorney or provided to any person, upon written request and payment of
agent of record in an application in which a the appropriate fee (§ 1.19(b)), if the benefit of the application
provisional double patenting rejection is made does is claimed under 35 U.S.C. 119(e), 120, 121, 365(c), or 386(c)
not have power of attorney in the copending in an application that has issued as a U.S. patent, or in an
application that has published as a statutory invention
application having a common assignee or inventor. registration, a U.S. patent application publication, an
However, a more expeditious means of obtaining international publication of an international application
underPCT Article 21(2) , or a publication of an international
registration under Hague Agreement Article 10(3). A copy of

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§ 103 MANUAL OF PATENT EXAMINING PROCEDURE

filed on or after September 16, 2012, an applicant

the application-as-filed or a specific document in the file of the
pending application may also be provided to any person upon other than an inventor. Since provisional applications
written request and payment of the appropriate fee (§ 1.19(b)). do not require an oath or declaration, there may be
The Office will not provide access to the paper file of a pending no power of attorney in the application. If there is
application, except as provided in paragraph (c) or (i) of this no power of attorney in the provisional application,
section.
a certified copy requested by the registered attorney
(vi) Unpublished pending applications (including or agent named in the papers accompanying the
provisional applications) that are incorporated by reference or
otherwise identified. A copy of the application as originally
provisional application papers will be supplied to
filed of an unpublished pending application may be provided the correspondence address of the provisional
to any person, upon written request and payment of the application. Provisional applications are also
appropriate fee (§ 1.19(b)), if the application is incorporated by available in the same manner as any other
reference or otherwise identified in a U.S. patent, a statutory application. For example, an application that is relied
invention registration, a U.S. patent application publication, an
international publication of an international application under upon for priority in a U.S. patent and is abandoned
PCT Article 21(2) , or a publication of an international is available under 37 CFR 1.14(a)(1)(iv) and, as a
registration under Hague Agreement Article 10(3) of an result may be available through public PAIR.
international design application designating the United States.
The Office will not provide access to the paper file of a pending
application, except as provided in paragraph (c) or (i) of this
VIII. APPLICATION AT THE PATENT TRIAL AND
section. APPEAL BOARD
*****
The Patent Trial and Appeal Board handles all
requests for access to, or copies of Office records
Whenever a patent relies on the filing date of an directly related to, applications involved in
earlier but still pending application, the Office interferences, derivation proceedings, or trials. See
permits an applicant to obtain a copy of the prior 37 CFR 41.109 and 37 CFR 42.3. See also MPEP
application, either as originally filed or of the Chapter 2300.
pending file history, upon written request (to the
Office of Public Records) and payment of the IX. DEFENSIVE PUBLICATIONS
appropriate fee. Furthermore, after publication of a
U.S. patent, a U.S. patent application publication, a The entire application file of a defensive publication
statutory invention registration, an international is available to the public for inspection and obtaining
application under PCT Article 21(2), or an copies. See MPEP § 711.06.
international registration under Hague Agreement
Article 10(3), the file contents of any abandoned X. REISSUE APPLICATIONS
application identified or relied upon in such a
publication are available pursuant to 37 CFR 37 CFR 1.11(b) opens reissue applications to
1.14(a)(1)(iv). If the application is pending and inspection by the general public. 37 CFR 1.11(b)
benefit of the application is claimed pursuant to 35 also provides for announcement of the filings of
U.S.C.119(e), 120, 121, 365(c), or 386(c) in such a reissue applications in the Official Gazette (except
patent document, then the file contents of the for continued prosecution applications filed under
application are available pursuant to 37 CFR 37 CFR 1.53(d)). This announcement gives
1.14(a)(1)(v). Such a patent application is available interested members of the public an opportunity to
through the public PAIR system if the application submit to the examiner information pertinent to
is maintained in the IFW system. patentability of the reissue application.

VII. ACCESS TO PROVISIONAL APPLICATIONS IFW reissue application files are open to inspection
by the general public by way of Public PAIR via the
In provisional applications, access or certified copies USPTO Internet site. In viewing the images of the
will only be given to parties with written authority files, members of the public will be able to view the
from a named inventor, the assignee of record, the entire content of the reissue application file history.
attorney or agent of record, or, for an application To access Public PAIR, a member of the public

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 SECRECY, ACCESS, NATIONAL SECURITY, AND FOREIGN FILING § 103

would (A) go to the USPTO website at (2) Determination of special circumstances. Any Board
www.uspto.gov, (B) click on “Check Status” under action not publishable under paragraph (a)(1) of this section
the “Patents” column, (C) click on Public PAIR, and may be published or made available for public inspection if the
Director believes that special circumstances warrant publication
(D) enter the reissue application number. and a party does not, within two months after being notified of
the intention to make the action public, object in writing on the
XI. REQUEST FOR REEXAMINATION ground that the action discloses the objecting party’s trade secret
or other confidential information and states with specificity that
such information is not otherwise publicly available. If the action
An announcement of the filing of each request for discloses such information, the party shall identify the deletions
reexamination in which the entire fee has been paid, in the text of the action considered necessary to protect the
and of each reexamination ordered at the initiative information. If the affected party considers that the entire action
of the Director under 37 CFR 1.520, will be must be withheld from the public to protect such information,
the party must explain why. The party will be given time, not
published in the Official Gazette. A reexamination
less than twenty days, to request reconsideration and seek court
file is normally NOT open to inspection by the review before any contested portion of the action is made public
general public until the file has been scanned into over its objection.
the IFW system, at which point the file is open to (b) Record of proceeding.
inspection by the public by way of Public PAIR via
(1) The record of a Board proceeding is available to
the USPTO Internet site. In viewing the images of the public unless a patent application not otherwise available to
the reexamination proceedings, members of the the public is involved.
public will be able to view the entire contents of the (2) Notwithstanding paragraph (b)(1) of this section,
reexamination file with the exception of non-patent after a final Board action in or judgment in a Board proceeding,
literature. See also MPEP § 2232. the record of the Board proceeding will be made available to
the public if any involved file is or becomes open to the public
under § 1.11 of this title or an involved application is or becomes
XII. DECISIONS BY THE DIRECTOR published under §§ 1.211 to 1.221 of this title.
37 CFR 1.14 Patent applications preserved in confidence.
*****
37 CFR 1.14(e) states the conditions under which
(e) Decisions by the Director. Any decision by the Director significant decisions by the Director that would not
that would not otherwise be open to public inspection may be otherwise be open to public inspection will be made
published or made available for public inspection if:
available to the public. 37 CFR 41.6 describes the
(1) The Director believes the decision involves an procedure for making a decision of the Patent Trial
interpretation of patent laws or regulations that would be of
and Appeal Board available to the public. These
precedential value; and
sections are applicable to decisions deemed by the
(2) The applicant is given notice and an opportunity to
Director to involve an interpretation of patent laws
object in writing within two months on the ground that the
decision discloses a trade secret or other confidential or regulation that would be of significant
information. Any objection must identify the deletions in the precedential value, where such decisions are
text of the decision considered necessary to protect the contained in either pending or abandoned
information, or explain why the entire decision must be withheld applications or in Board records not otherwise open
from the public to protect such information. An applicant or
party will be given time, not less than twenty days, to request
to the public. It is applicable whether or not the
reconsideration and seek court review before any portions of a decision is a final decision of the U.S. Patent and
decision are made public under this paragraph over his or her Trademark Office.
objection
***** 37 CFR 1.14(e) and 37 CFR 41.6 are considered to
place a duty on the U.S. Patent and Trademark Office
37 CFR 41.6 Public availability of Board records. to identify significant decisions and to take the steps
(a) Publication. necessary to inform the public of such decisions, by
(1) Generally. Any Board action is available for public
publication of such decisions, in whole or in part. It
inspection without a party’s permission if rendered in a file open is anticipated, however, that no more than a few
to the public pursuant to § 1.11 of this title or in an application dozen decisions per year will be deemed of sufficient
that has been published in accordance with §§ 1.211 to 1.221 importance to warrant publication under the authority
of this title. The Office may independently publish any Board of this section.
action that is available for public inspection.

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§ 104 MANUAL OF PATENT EXAMINING PROCEDURE

XIII. FOIA REQUESTS application file is available, and the application contains written
authority (e.g., a power to inspect) granting access to such
37 CFR 102.4 Requirements for making requests. person. The written authority must be signed by:

(a) A request for USPTO records that are not customarily (1) The applicant;
made available to the public as part of USPTO’s regular (2) A patent practitioner of record;
informational services must be in writing, and shall be processed
under FOIA, regardless of whether FOIA is mentioned in the (3) The assignee or an assignee of an undivided part
request. Requests should be sent to the USPTO FOIA Officer, interest;
United States Patent and Trademark Office, P.O. Box 1450, (4) The inventor or a joint inventor; or
Alexandria, Virginia 22313-1450 (records FOIA requires to be
made regularly available for public inspection and copying are (5) A registered attorney or agent named in the papers
addressed in § 102.2(c)). For the quickest handling, the request accompanying the application papers filed under § 1.53 or the
letter and envelope should be marked “Freedom of Information national stage documents filed under § 1.495, if a power of
Act Request.” For requests for records about oneself, § 102.24 attorney has not been appointed under § 1.32.
contains additional requirements. For requests for records about *****
another individual, either a written authorization signed by that
individual permitting disclosure of those records to the requester
or proof that individual is deceased (for example, a copy of a For applications filed on or after September 16,
death certificate or an obituary) facilitates processing the request. 2012, the applicant, a patent practitioner of record,
(b) The records requested must be described in enough the assignee or an assignee of an undivided part
detail to enable USPTO personnel to locate them with a interest, or an inventor may provide a written
reasonable amount of effort. Whenever possible, a request should
include specific information about each record sought, such as
authority for access to a pending or abandoned
the date, title or name, author, recipient, and subject matter of application kept in confidence under 35 U.S.C.
the record, and the name and location of the office where the 122(a), except as provided in 37 CFR 1.11, 1.14,
record is located. Also, if records about a court case are sought, 41.6, or 42.412. The written authority must identify
the title of the case, the court in which the case was filed, and
the application to be inspected and the name of the
the nature of the case should be included. If known, any file
designations or descriptions for the requested records should be person authorized to have access, and will be made
included. In general, the more specifically the request describes of record. Access provided upon the written order
the records sought, the greater the likelihood that USPTO will of the Director will also become a part of the record
locate those records. If the FOIA Officer determines that a of the application.
request does not reasonably describe records, the FOIA Officer
will inform the requester what additional information is needed
or why the request is otherwise insufficient. The FOIA Officer A person acting in a representative capacity under
also may give the requester an opportunity to discuss the request 37 CFR 1.34 may execute a power to inspect an
so that it may be modified to meet the requirements of this application only if the patent practitioner was named
section.
in the application transmittal papers filed under 37
CFR 1.53 or the national stage documents filed under
Many decisions of the Office are available on the 37 CFR 1.495 and a power of attorney has not been
FOIA section of the USPTO website at appointed under 37 CFR 1.32. Once a power of
w w w. u s p t o . g ov / l e a rn i n g - a n d - re s o u rc e s attorney has been filed, any previously filed power
/ip-policy/electronic-freedom-information-act-e-foia. to inspect signed by a patent practitioner who does
See 37 CFR Part 102, Subpart A, “Freedom of not have a power of attorney will cease to have
Information Act,” for rules pertaining to FOIA effect. For a discussion of power of attorney in an
requests. application, see MPEP § 402.

104 Power to Inspect Application [R-07.2015] II. AUTHORITY TO GRANT ACCESS -

APPLICATION FILED BEFORE SEPTEMBER 16,
2012
I. AUTHORITY TO GRANT ACCESS -
APPLICATION FILED ON OR AFTER 37 CFR 1.14 (pre-AIA) Patent applications preserved in
SEPTEMBER 16, 2012 confidence.
*****
37 CFR 1.14 Patent applications preserved in confidence.
***** (c) Power to inspect a pending or abandoned application.
Access to an application may be provided to any person if the
(c) Power to inspect a pending or abandoned application. application file is available, and the application contains written
Access to an application may be provided to any person if the

Rev. 07.2015, October 2015 100-20

 SECRECY, ACCESS, NATIONAL SECURITY, AND FOREIGN FILING § 104

authority (e.g., a power to inspect) granting access to such Number is associated with the correspondence
person. The written authority must be signed by:
address for the application, and the applicant or
(1) An applicant; attorney has access to Private PAIR for the customer
(2) An attorney or agent of record; number). In addition, IFW application files of
(3) An authorized official of an assignee of record published applications or patents are available at
(made of record pursuant to § 3.71 of this chapter); or least through Public PAIR. If for some reason an
(4) A registered attorney or agent named in the papers applicant, inventor, assignee, or attorney or agent of
accompanying the application papers filed under § 1.53 or the record cannot view an IFW application through
national stage documents filed under § 1.495, if an executed PAIR, then a copy of the application must be
oath or declaration pursuant to § 1.63 or § 1.497 has not been
filed.
purchased from the Office of Public Records. A
*****
"power to inspect" is, in effect, the same as a "power
to inspect and make copies."

For applications filed prior to September 16, 2012, Where an applicant relied on his or her application
if an executed oath or declaration pursuant to 37 as a means to interfere with a competitor’s business
CFR 1.63 or 1.497 has been filed, no person but the or customers, permission to inspect the application
applicant (any one of joint applicants), an attorney may be given the competitor by the Director. Such
or agent of record (if a power of attorney was filed), permission is via petition for access under 37 CFR
or an assignee whose assignment is of record will 1.14(i).
be permitted to have access to the file of any pending
application kept in confidence under 35 U.S.C. An unrestricted power to inspect given by an
122(a), except as provided for under 37 CFR 1.11, applicant or inventor is, under existing practice,
1.14, 41.6, or 42.412, unless written authority from recognized as in effect until and unless rescinded.
one of the above indicated parties, identifying the The same is true in the case of one given by the
application to be inspected and the name of the attorney or agent of record, or assignee so long as
person authorized to have access, is made of record, such attorney or agent, or assignee retains his or her
or upon the written order of the Director, which will connection with the application.
also become a part of the record of the application.
Permission to inspect given by the Director,
A person acting in a representative capacity under however, is not of a continuing nature, since the
37 CFR 1.34 may execute a power to inspect an conditions that justified the permission to inspect
application only if the attorney or agent was named when given may not apply at a later date.
in the application transmittal papers filed under 37
CFR 1.53 or the national stage documents filed under IV. ACCESS TO PATENT APPLICATIONS
37 CFR 1.495 and an executed oath or declaration (PROVISIONAL AND NONPROVISIONAL) AND
has not been filed. Once an executed oath or BOARD RECORDS
declaration has been filed, any previously filed
power to inspect signed by a registered attorney or In order to ensure that access to patent applications,
agent who does not have a power of attorney will other than applications that are available pursuant
cease to have effect. For a discussion of power of to 37 CFR 1.11 or 1.14, and Board records are given
attorney in an application, see MPEP § 402. only to persons who are entitled thereto or who are
specially authorized to have access under 37 CFR
III. POWER TO INSPECT 1.11, 1.14 and 41.6 and to ensure also that the file
record identifies any such specially authorized
Powers to inspect are not accepted in Image File person who has been given access to a file, the
Wrapper (IFW) applications. IFW applications are following practice will be observed by all personnel
available through the Private Patent Application of the U.S. Patent and Trademark Office:
Information Retrieval (PAIR) system, and pro se
applicants and attorneys of record have direct access (A) Access, as provided for in the rules, will be
to the IFW through Private PAIR (when a Customer given on oral request to any applicant, inventor,
patentee, assignee, or attorney or agent of record in

100-21 Rev. 07.2015, October 2015

§ 105 MANUAL OF PATENT EXAMINING PROCEDURE

an application or patent only upon proof of identity applicant. Power to inspect given to such an attorney
or upon recognition based on personal acquaintance. or agent will not be accepted.
(B) Where a power of attorney or authorization
of agent was given to a registered firm prior to July 106 Control of Inspection by Assignee
2, 1971, access will be given upon oral request as in [R-11.2013]
paragraph (A) above to any registered member or
employee of the firm who has signatory power for The applicant or assignee of record of the entire
the firm. interest in an application may file an application or
(C) Unregistered employees of attorneys or intervene in the prosecution of the application,
agents, public stenographers, and all other persons appointing an attorney or agent of his or her own
not within the provisions of paragraphs (A) and (B) choice. See 37 CFR 1.46 and 3.71. Such an
above will be given access only upon presentation application filing or intervention, however, does not
of a written authorization for access (power to exclude the inventor from access to the application
inspect) signed by a person specified in paragraph to see that it is being prosecuted properly, unless the
(A) above, which authorization will be entered as a applicant or assignee makes specific request to that
part of the official file. The power to inspect must effect. Any request to prevent the inventor from
specifically name the person who is entitled to obtaining access to the file should be filed as a
inspect and copy the application. An associate or separate paper, 37 CFR 1.4(c), and should be
representative of the named person is not entitled to directed to the Office of Petitions. If the request is
access to the application on behalf of the authorized granted, the inventor will be informed that he or she
person. Further, the power to inspect must will only be permitted to inspect the application on
specifically identify the application by application sufficient showing why such inspection is necessary
number and be limited to a single application. Form to conserve his or her rights. Of course, after the
PTO/SB/67 may be used for this purpose. application has published pursuant to 35 U.S.C.
122(b), the application will be available to the public
(D) In provisional applications, access or and any restriction on the inventor to access his or
certified copies may only be requested by parties her application previously granted will no longer be
with written authority from a named inventor, the in effect.
applicant, the assignee of record, or the attorney or
agent of record, unless the application is available
pursuant to 37 CFR 1.14(a)(1)(iv)-(vi). Since
106.01 Rights of Assignee of Part Interest
provisional applications do not require an oath or [R-11.2013]
declaration, there may be no power of attorney in
the application. If the person requesting a certified While it is only the assignee of record of the entire
copy is not a named inventor, the applicant, assignee interest who can intervene in the prosecution of an
of record, or an attorney or agent of record, the application or interference to the exclusion of the
requested certified copy will be supplied to the applicant (or, for applications filed on or after
correspondence address of the provisional September 16, 2012, can prosecute the application
application after becoming the applicant under 37 CFR 1.46),
an assignee of a part interest or a licensee of
105 Suspended or Excluded Practitioner exclusive right is entitled to inspect the application.
Cannot Inspect [R-11.2013] For information pertaining to prosecution by the
assignee, see MPEP § 324 (for applications filed
U.S. Patent and Trademark Office (USPTO) before September 16, 2012) and MPEP § 325 (for
employees are forbidden to hold either oral or written applications filed on or after September 16, 2012).
communication with an attorney or agent who has
been suspended or excluded from practice by the
USPTO regarding an application unless it is one in
which said attorney or agent is an inventor or the

Rev. 07.2015, October 2015 100-22

 SECRECY, ACCESS, NATIONAL SECURITY, AND FOREIGN FILING § 110

107-109 [Reserved]
PCT Article 38
Confidential Nature of the International Preliminary
Examination.
110 Confidential Nature of International
(1) Neither the International Bureau nor the International
Applications [R-07.2015] Preliminary Examining Authority shall, unless requested or
authorized by the applicant, allow access within the meaning,
PCT Article 30 and with the proviso, of Article 30(4) to the file of the
Confidential Nature of the International Application. international preliminary examination by any person or authority
at any time, except by the elected Offices once the international
(1)(a) Subject to the provisions of subparagraph (b), preliminary examination report has been established.
the International Bureau and the International Searching
Authorities shall not allow access by any person or authority to (2) Subject to the provisions of paragraph (1) and Articles
the international application before the international publication 36(1) and (3) and 37(3)(b), neither the International Bureau nor
of that application, unless requested or authorized by the the International Preliminary Examining Authority shall, unless
applicant. requested or authorized by the applicant, give information on
the issuance or non-issuance of an international preliminary
(b) The provisions of subparagraph (a) shall not apply examination report and on the withdrawal or non-withdrawal
to any transmittal to the competent International Searching of the demand or of any election.
Authority, to transmittals provided for under Article 13, and to
communications provided for under Article 20.
35 U.S.C. 368 Secrecy of certain inventions; filing
(2)(a) No national Office shall allow access to the international applications in foreign countries.
international application by third parties unless requested or
authorized by the applicant, before the earliest of the following (a) International applications filed in the Patent and
dates: Trademark Office shall be subject to the provisions of chapter
17.
(i) date of the international publication of the
international application, (b) In accordance with article 27(8) of the treaty, the filing
of an international application in a country other than the United
(ii) date of receipt of the communication of the
States on the invention made in this country shall be considered
international application under Article 20,
to constitute the filing of an application in a foreign country
(iii) date of receipt of a copy of the international within the meaning of chapter 17, whether or not the United
application under Article 22. States is designated in that international application.
(b) The provisions of subparagraph (a) shall not prevent (c) If a license to file in a foreign country is refused or if
any national Office from informing third parties that it has been an international application is ordered to be kept secret and a
designated, or from publishing that fact. Such information or permit refused, the Patent and Trademark Office when acting
publication may, however, contain only the following data: as a Receiving Office, International Searching Authority, or
identification of the receiving Office, name of the applicant, International Preliminary Examining Authority, may not disclose
international filing date, international application number, and the contents of such application to anyone not authorized to
title of the invention. receive such disclosure.
(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. Although most international applications are
(3) The provisions of paragraph (2)(a) shall apply to any
published soon after the expiration of 18 months
receiving Office except as so far as transmittals provided for from the priority date, PCT Article 21(2)(a), such
under Article 12(1) are concerned. publication does not open up the Home Copy or
(4) For the purposes of this Article, the term “access” covers Search Copy to the public for inspection, except as
any means by which third parties may acquire cognizance, provided in 37 CFR 1.14(g) .
including individual communication and general publication,
provided, however, that no national Office shall generally 37 CFR 1.14 Patent applications preserved in confidence.
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 (g) International applications.
date, before the expiration of 20 months from the said priority (1) Copies of international application files for
date. international applications which designate the U.S. and which
have been published in accordance with PCT Article 21(2), or
copies of a document in such application files, will be furnished
in accordance with PCT Articles 30 and 38 and PCT Rules 94.2
and 94.3, upon written request including a showing that the
publication of the application has occurred and that the U.S.

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§ 110 MANUAL OF PATENT EXAMINING PROCEDURE

was designated, and upon payment of the appropriate fee (see available copies of, and allow access to, those
§ 1.19(b)), if: international application files which are kept in the
(i) With respect to the Home Copy (the copy of USPTO (see 37 CFR 1.14(g) ).
the international application kept by the Office in its capacity
as the Receiving Office, see PCT Article 12(1)), the international
37 CFR 1.14(g)(1) sets forth those conditions upon
application was filed with the U.S. Receiving Office;
which copies of international application files may
(ii) With respect to the Search Copy (the copy of be provided to the public. 37 CFR 1.14(g)(1)(i) and
an international application kept by the Office in its capacity as
the International Searching Authority, see PCT Article 12(1)), (ii) address the situation where the U.S. acted as the
the U.S. acted as the International Searching Authority, except receiving Office and the International Searching
for the written opinion of the International Searching Authority Authority, respectively. Under these provisions,
which shall not be available until the expiration of thirty months copies of the Home and Search Copies of the
from the priority date; or
international file will be provided upon request.
(iii) With respect to the Examination Copy (the However, the written opinion established by
copy of an international application kept by the Office in its
capacity as the International Preliminary Examining Authority),
the International Searching Authority will not be
the United States acted as the International Preliminary available until the expiration of 30 months from the
Examining Authority, an International Preliminary Examination priority date. 37 CFR 1.14(g)(1)(iii) addresses the
Report has issued, and the United States was elected. situation in which the U.S. acted as the International
(2) A copy of an English language translation of a Preliminary Examining Authority (IPEA), the U.S.
publication of an international application which has been filed was elected, and the international preliminary
in the United States Patent and Trademark Office pursuant to examination report (IPER) has issued. PCT Rule
35 U.S.C. 154(d)(4) will be furnished upon written request
including a showing that the publication of the application in 94.2 provides that after issuance of the IPER, the
accordance with PCT Article 21(2) has occurred and that the IPEA shall provide copies of any documents in the
U.S. was designated, and upon payment of the appropriate fee examination file to the elected Offices upon request.
(§ 1.19(b)(4)). PCT Rule 94.3 permits the elected Offices to provide
(3) Access to international application files for access to any documents in its files after international
international applications which designate the U.S. and which publication has occurred. Therefore, the USPTO
have been published in accordance with PCT Article 21(2), or
acting in its capacity as an elected Office, will
copies of a document in such application files, will be permitted
in accordance with PCT Articles 30 and 38 and PCT Rules 44 provide a copy of the examination file in an
ter .1, 94.2 and 94.3, upon written request including a showing international application to a third party upon
that the publication of the application has occurred and that the submission of a request complying with the
U.S. was designated. requirements of 37 CFR 1.14(g)(1)(iii). Requests
(4) In accordance with PCT Article 30, copies of an for copies of an international application file under
international application-as-filed under paragraph (a) of this 37 CFR 1.14(g)(1) must be in the form of a written
section will not be provided prior to the international publication
of the application pursuant to PCT Article 21(2).
request sent to the International Patent Legal
Administration and must include a showing that the
(5) Access to international application files under
paragraphs (a)(1)(i) through (a)(1)(vi) and (g)(3) of this section
international application has been published and that
will not be permitted with respect to the Examination Copy in the U.S. was designated. Such a showing should
accordance with PCT Article 38. preferably be in the form of the submission of a copy
***** of the front page of the published international
application. Additionally, requests for copies of
international application files must also be
37 CFR 1.14(g) applies to international applications accompanied by the appropriate fee (37 CFR
having an international filing date on or after 1.19(b)).
November 29, 2000. After publication of an
application under 35 U.S.C. 122(b), the USPTO will 37 CFR 1.14(g)(2) provides that copies of English
make available copies of the application files and language translations of international applications,
also allow for access to those files in accordance which were published in a non-English language
with 37 CFR 1.14(a). Therefore, after publication and which designated the U.S., and which have been
of an international application designating the U.S. submitted to the Office pursuant to 35 U.S.C.
under PCT Article 21, the USPTO will make 154(d)(4), will also be available to the public. The

Rev. 07.2015, October 2015 100-24

 SECRECY, ACCESS, NATIONAL SECURITY, AND FOREIGN FILING § 115

USPTO will not provide general notification to the Commissioner for Patents. The Commissioner then
public of the filing of English language translations issues a Secrecy Order and withholds the publication
under 35 U.S.C. 154. Under 35 U.S.C. 154, it is the of the application or the grant of a patent for such
responsibility of the applicant to notify any possible period as the national interest requires.
infringers for the purposes of obtaining provisional
rights. For those applications in which the Government has
a property interest (including applications indicating
37 CFR 1.14(g)(3) addresses access to the Home national security classified subject matter),
Copy and the Search Copy of the international responsibility for notifying the Commissioner for
application. Access to the Examination Copy of the Patents of the need for a Secrecy Order resides with
international application is prohibited under 37 CFR the agency having that interest. Applications that are
1.14(g)(5) as required by PCT Article 38. national security classified (see 37 CFR 1.9(i)) may
be so indicated by use of authorized national security
111-114 [Reserved] markings (e.g., “Confidential,” “Secret,” or “Top
Secret”). National security classified documents filed
in the USPTO must be either hand-carried to
Licensing and Review or mailed to the Office in
115 Review of Applications for National
compliance with 37 CFR 5.1(a) and Executive Order
Security and Property Rights Issues
13526 of December 29, 2009. However, the Office
[R-07.2015] will accept such applications filed with the USPTO
35 U.S.C. 181 Secrecy of certain inventions and withholding via the Department of Defense Secret Internet
of patent. Protocol Router Network (SIPRNET) and consider
them as filed via the USPTO’s electronic filing
Whenever publication or disclosure by the publication of an
application or by the grant of a patent on an invention in which
system for purposes of 37 CFR 1.16(t) and 37 CFR
the Government has a property interest might, in the opinion of 1.445(a)(ii). As set forth in 37 CFR 5.1(d), the
the head of the interested Government agency, be detrimental applicant in a national security classified patent
to the national security, the Commissioner of Patents upon being application must obtain a secrecy order from the
so notified shall order that the invention be kept secret and shall
appropriate defense agency or provide authority to
withhold the publication of an application or the grant of a patent
therefor under the conditions set forth hereinafter. cancel the markings. A list of contacts at the
appropriate defense agency can be obtained by
***** contacting Licensing and Review.

A second purpose for the screening of all

All provisional applications filed under 35 U.S.C.
applications, with an exception for provisional
111(b), nonprovisional applications filed under
applications, is to identify inventions in which DOE
35 U.S.C. 111(a), international applications filed
or NASA might have property rights. See 42 U.S.C.
under the PCT, and international design applications
2182, 51 U.S.C. 20135, and MPEP § 150.
filed under the Hague Agreement, in the U.S. Patent
and Trademark Office (USPTO) are reviewed for
the purposes of issuance of a foreign filing license A third function of the screening procedure is to
pursuant to 35 U.S.C. 184. See also 37 CFR 5.1(b). process foreign filing license petitions under 37 CFR
These applications are screened upon receipt in the 5.12(a). See MPEP § 140.
USPTO for subject matter that, if disclosed, might
impact the national security. Such applications are Provisional applications filed in a foreign language
referred to the appropriate agencies for consideration are also screened under these provisions. The Office
of restrictions on disclosure of the subject matter as will make an attempt to determine the subject matter
provided for in 35 U.S.C. 181. of the application, but the applicant may be required
to provide at least an English language abstract of
If a defense agency concludes that disclosure of the the information for screening purposes. It is strongly
invention would be detrimental to the national recommended that if the applicant is in possession
security, a secrecy order is recommended to the of an English language description of the technology,

100-25 Rev. 07.2015, October 2015

§ 116-119 MANUAL OF PATENT EXAMINING PROCEDURE

it should be filed with the provisional application to applications (§ 1.9(a)(3)), international applications (§ 1.9(b)),
prevent screening delays. or international design applications (§ 1.9(n)).
(2) Foreign application as used in this part includes,
All applications are required to be cleared from for filing in a foreign country, foreign patent office, foreign
patent agency, or international agency (other than the United
secrecy review before forwarding to issue. If the
States Patent and Trademark Office acting as a Receiving Office
L&R code on the general information display does for international applications (35 U.S.C. 361, § 1.412) or as an
not equal 1, then in an IFW application, a message office of indirect filing for international design applications (35
should be sent to LREVINCOMINGDOCS. U.S.C. 382, § 1.1002)) any of the following: An application for
patent, international application, international design application,
or application for the registration of a utility model, industrial
The Patent Application Locating and Monitoring design, or model.
(PALM) System's general information display
(c) Patent applications and documents relating thereto that
discloses the current Licensing and Review status are national security classified (see § 1.9(i) of this chapter) and
as well as the historical status. The indicator “L&R contain authorized national security markings (e.g.,
code” displays the current status of the application “Confidential,” “Secret” or “Top Secret”) are accepted by the
while the indicators “Third Level Review” and Office. National security classified documents filed in the Office
must be either hand-carried to Licensing and Review or mailed
“Secrecy Order” display the historical status of the to the Office in compliance with paragraph (a) of this section.
application. An L&R code of “3” or a “Third Level
(d) The applicant in a national security classified patent
Review” of “Yes” indicates that application is/has application must obtain a secrecy order pursuant to § 5.2(a). If
been considered for security screening. a national security classified patent application is filed without
a notification pursuant to § 5.2(a), the Office will set a time
An L&R code of “4” indicates that application is period within which either the application must be declassified,
or the application must be placed under a secrecy order pursuant
currently under Secrecy Order. In this case, the to § 5.2(a), or the applicant must submit evidence of a good
application has been converted to a paper application faith effort to obtain a secrecy order pursuant to § 5.2(a) from
file and there should be no images maintained in the the relevant department or agency in order to prevent
Image File Wrapper system (IFW). abandonment of the application. If evidence of a good faith
effort to obtain a secrecy order pursuant to § 5.2(a) from the
relevant department or agency is submitted by the applicant
While the initial screening is performed only by within the time period set by the Office, but the application has
designated personnel, all examiners have a not been declassified or placed under a secrecy order pursuant
responsibility to be alert for obviously sensitive to § 5.2(a), the Office will again set a time period within which
subject matter either in the original disclosure or either the application must be declassified, or the application
must be placed under a secrecy order pursuant to § 5.2(a), or
subsequently introduced, for example, by the applicant must submit evidence of a good faith effort to
amendment. If the examiner is aware of subject again obtain a secrecy order pursuant to § 5.2(a) from the
matter which should be subject to screening by relevant department or agency in order to prevent abandonment
appropriate office personnel, this should be brought of the application.
to the attention of Licensing and Review, to any of (e) An application will not be published under § 1.211 of
the supervisory patent examiners (SPEs) of this chapter or allowed under § 1.311 of this chapter if
publication or disclosure of the application would be detrimental
Technology Center Working Group 3640.
to national security. An application under national security
review will not be published at least until six months from its
116-119 [Reserved] filing date or three months from the date the application was
referred to a defense agency, whichever is later. A national
security classified patent application will not be published under
§ 1.211 of this chapter or allowed under § 1.311 of this chapter
120 Secrecy Orders [R-07.2015] until the application is declassified and any secrecy order under
§ 5.2(a) has been rescinded.
37 CFR 5.1 Correspondence. (f) Applications on inventions made outside the United
(a) All correspondence in connection with this part, States and on inventions in which a U.S. Government defense
including petitions, should be addressed to: Mail Stop L&R, agency has a property interest will not be made available to
Commissioner for Patents, P.O. Box 1450, Alexandria, Virginia defense agencies.
22313-1450.
(b) Definitions. 37 CFR 5.2 Secrecy order.
(1) Application as used in this part includes provisional (a) When notified by the chief officer of a defense agency
applications (§ 1.9(a)(2) of this chapter), nonprovisional that publication or disclosure of the invention by the granting

Rev. 07.2015, October 2015 100-26

 SECRECY, ACCESS, NATIONAL SECURITY, AND FOREIGN FILING § 120

of a patent would be detrimental to the national security, an (a) A petition for rescission or removal of a secrecy order
order that the invention be kept secret will be issued by the may be filed by, or on behalf of, any principal affected thereby.
Commissioner for Patents. Such petition may be in letter form, and it must be in duplicate.
(b) Any request for compensation as provided in 35 U.S.C. (b) The petition must recite any and all facts that purport
183 must not be made to the Patent and Trademark Office, but to render the order ineffectual or futile if this is the basis of the
directly to the department or agency which caused the secrecy petition. When prior publications or patents are alleged the
order to be issued. petition must give complete data as to such publications or
patents and should be accompanied by copies thereof.
(c) An application disclosing any significant part of the
subject matter of an application under a secrecy order pursuant (c) The petition must identify any contract between the
to paragraph (a) of this section also falls within the scope of Government and any of the principals under which the subject
such secrecy order. Any such application that is pending before matter of the application or any significant part thereof was
the Office must be promptly brought to the attention of Licensing developed or to which the subject matter is otherwise related.
and Review, unless such application is itself under a secrecy If there is no such contract, the petition must so state.
order pursuant to paragraph (a) of this section. Any subsequently
(d) Appeal to the Secretary of Commerce, as provided by
filed application containing any significant part of the subject
35 U.S.C. 181, from a secrecy order cannot be taken until after
matter of an application under a secrecy order pursuant to
a petition for rescission of the secrecy order has been made and
paragraph (a) of this section must either be hand-carried to
denied. Appeal must be taken within sixty days from the date
Licensing and Review or mailed to the Office in compliance
of the denial, and the party appealing, as well as the department
with § 5.1(a).
or agency which caused the order to be issued, will be notified
of the time and place of hearing.
37 CFR 5.3 Prosecution of application under secrecy orders;
withholding patent.
37 CFR 5.5 Permit to disclose or modification of secrecy
Unless specifically ordered otherwise, action on the application order.
by the Office and prosecution by the applicant will proceed (a) Consent to disclosure, or to the filing of an application
during the time an application is under secrecy order to the point abroad, as provided in 35 U.S.C. 182, shall be made by a
indicated in this section: “permit” or “modification” of the secrecy order.

(a) National applications under secrecy order which come (b) Petitions for a permit or modification must fully recite
to a final rejection must be appealed or otherwise prosecuted to the reason or purpose for the proposed disclosure. Where any
avoid abandonment. Appeals in such cases must be completed proposed disclosee is known to be cleared by a defense agency
by the applicant but unless otherwise specifically ordered by to receive classified information, adequate explanation of such
the Commissioner for Patents will not be set for hearing until clearance should be made in the petition including the name of
the secrecy order is removed. the agency or department granting the clearance and the date
and degree thereof. The petition must be filed in duplicate.
(b) An interference or derivation will not be instituted
involving a national application under secrecy order. An (c) In a petition for modification of a secrecy order to permit
applicant whose application is under secrecy order may suggest filing abroad, all countries in which it is proposed to file must
an interference (§ 41.202(a) of this title), but the Office will not be made known, as well as all attorneys, agents and others to
act on the request while the application remains under a secrecy whom the material will be consigned prior to being lodged in
order. the foreign patent office. The petition should include a statement
vouching for the loyalty and integrity of the proposed disclosees
(c) When the national application is found to be in condition and where their clearance status in this or the foreign country
for allowance except for the secrecy order the applicant and the is known all details should be given.
agency which caused the secrecy order to be issued will be
notified. This notice (which is not a notice of allowance under (d) Consent to the disclosure of subject matter from one
§ 1.311 of this chapter) does not require reply by the applicant application under secrecy order may be deemed to be consent
and places the national application in a condition of suspension to the disclosure of common subject matter in other applications
until the secrecy order is removed. When the secrecy order is under secrecy order so long as not taken out of context in a
removed the Patent and Trademark Office will issue a notice of manner disclosing material beyond the modification granted in
allowance under § 1.311 of this chapter, or take such other action the first application.
as may then be warranted. (e) Organizations requiring consent for disclosure of
(d) International applications and international design applications under secrecy order to persons or organizations in
applications under secrecy order will not be mailed, delivered, connection with repeated routine operation may petition for
or otherwise transmitted to the international authorities or the such consent in the form of a general permit. To be successful
applicant. International applications under secrecy order will such petitions must ordinarily recite the security clearance status
be processed up to the point where, if it were not for the secrecy of the disclosees as sufficient for the highest classification of
order, record and search copies would be transmitted to the material that may be involved.
international authorities or the applicant.

37 CFR 5.4 Petition for rescission of secrecy order.

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§ 120 MANUAL OF PATENT EXAMINING PROCEDURE

Spain, Sweden, Turkey and the United Kingdom.

I. SECRECY ORDER TYPES Please note that applications subject to a secrecy
order cannot be filed directly with the European
Three types of Secrecy Orders, each of a different Patent Office since no reciprocal security agreement
scope, are issued as follows: with this organization exists. Applications must be
filed in the individual EPO member countries
(A) Secrecy Order and Permit for Foreign Filing identified above. Applicant must arrange filing of
in Certain Countries (Type I secrecy order)— to be such subject matter through the agency sponsoring
used for those patent applications that disclose the secrecy order.
critical technology with military or space application
in accordance with DoD Directive 5230.25 The intent of the Type II Secrecy Order is to
“Withholding of Unclassified Technical Data From treat classified and classifiable technical data
Public Disclosure,” based on 10 U.S.C. 130 presented as a patent application in the same manner
“Authority to Withhold From Public Disclosure as any other classified material. Accordingly, this
Certain Technical Data.” Secrecy Order will include a notification of the
(B) Secrecy Order and Permit for Disclosing classification level of the technical data in the
Classified Information (Type II secrecy order)— to application.
be used for those patent applications which contain
data that is properly classified or classifiable under The Type III Secrecy Order is used where the other
a security guideline where the patent application types of Orders do not apply, including Orders issued
owner has a current DoD Security Agreement, DD by direction of agencies other than the Department
Form 441. If the application is classifiable, this of Defense.
secrecy order allows disclosure of the technical
information as if it were classified as prescribed in A Secrecy Order should not be construed in any way
the National Industrial Security Program Operating to mean that the Government has adopted or
Manual (NISPOM). contemplates adoption of the alleged invention
disclosed in an application; nor is it any indication
(C) General Secrecy Order (Type III secrecy
of the value of such invention.
order)— to be used for those patent applications that
contain data deemed detrimental to national security
II. RELATED SUBJECT MATTER
if published or disclosed, including that data properly
classifiable under a security guideline where the
patent application owner does not have a DoD The Secrecy Orders apply to the subject matter of
Security Agreement. The order prevents disclosure the invention, not just to the patent application itself.
of the subject matter to anyone without an express Thus, the Secrecy Order restricts disclosure or
written consent from the Commissioner for Patents. publication of the invention in any form.
However, quite often this type of secrecy order Furthermore, other patent applications already filed
includes a permit “Permit A” which relaxes the or later filed which contain any significant part of
disclosure restrictions as set forth in the permit. the subject matter of the application also fall within
the scope of the Order and must be brought to the
The Type I Secrecy Order is intended to permit the attention of Licensing & Review if such applications
widest utilization of the technical data in the patent are not already under Secrecy Order by the
application while still controlling any publication or Commissioner.
disclosure which would result in an unlawful
exportation. This type of Secrecy Order also The effects of a Secrecy Order are detailed in the
identifies the countries where corresponding patent notifying letter and include restrictions on disclosure
applications may be filed. Countries with which the of the invention and delay of any patent grant until
United States has reciprocal security agreements are: the Order is rescinded.
Australia, Belgium, Canada, Denmark, France,
Germany, Greece, Italy, Japan, Luxembourg,
Netherlands, Norway, Portugal, Republic of Korea,

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 SECRECY, ACCESS, NATIONAL SECURITY, AND FOREIGN FILING § 120

III. CORRESPONDENCE IV. INTERNATIONAL APPLICATIONS (PCT) AND

INTERNATIONAL DESIGN APPLICATIONS
When the Secrecy Order issues, the law specifies
that the subject matter or any material information If the Secrecy Order is applied to an international
relevant to the application, including unpublished application or an international design application,
details of the invention, shall not be published or the application will not be mailed, delivered, or
disclosed to any person not aware of the invention otherwise transmitted to the international authorities
prior to the date of the Order, including any or the applicant as long as the Secrecy Order remains
employee of the principals except as permitted by in effect.
the Secrecy Order. The law also requires that all
information material to the subject matter of the An international application will be considered
application be kept in confidence, unless written withdrawn (abandoned) if the Secrecy Order remains
permission to disclose is first obtained from the in effect at the end of the time limit under PCT Rule
Commissioner for Patents except as provided by the 22.3 because the Record Copy of the international
Secrecy Order. Therefore, all correspondence to be application was not received in time by the
filed in an application which is subject to a secrecy International Bureau. 37 CFR 5.3(d), PCT Article
order and which is directly related to the subject 12(3), and PCT Rule 22.3. If the United States of
matter covered by the Secrecy Order must be America has been designated, however, it is possible
transmitted to the Office in a manner which would to save the U.S. filing date, by fulfilling the
preclude disclosure to unauthorized individuals and requirements of 35 U.S.C. 371(c) prior to the
addressed as set forth in 37 CFR 5.1(a). Use of withdrawal.
facsimile transmission is not permitted. 37 CFR
1.6(d)(6). V. CHANGES IN SECRECY ORDERS

Subject matter under Secrecy Order must be Applicants may petition for rescission or
safeguarded under conditions that will provide modification of the Secrecy Order. For example, if
adequate protection and prevent access by the applicant believes that certain existing facts or
unauthorized persons. circumstances would render the Secrecy Order
ineffectual, he or she may informally contact the
When applicants desire to change the Power of sponsoring agency to discuss these facts or formally
Attorney in an application under Secrecy Order, petition the Commissioner for Patents to rescind the
applicant is required to provide a statement that the Order. Rescission of a Secrecy Order may also be
new attorney(s) has been apprised of the secrecy effected in some circumstances by expunging the
order. sensitive subject matter from the disclosure, provided
the sensitive subject matter is not necessary for an
In the case of applications bearing National Security enabling disclosure under 35 U.S.C. 112. See MPEP
Classification markings pursuant to an Executive § 724.05. The defense agency identified with the
Order, e.g., “Confidential” or “Secret,” applicants Secrecy Order as sponsoring the Order should be
must provide a DoD cage code as evidence of the contacted directly for assistance in determining what
ability to accept and store classified information. subject matter in the application is sensitive, and
Applicants no longer need to provide individual whether the agency would agree to rescind the Order
personal information to ensure a proper security upon expunging this subject matter. The applicant
clearance. Personnel controlling the cleared may also petition the Commissioner for Patents for
correspondence address bear the burden of ensuring a permit to disclose the invention to another or to
that individuals obtaining classified information from modify the Secrecy Order stating fully the reason or
the correspondence address follow the proper purpose for disclosure or modification. An example
procedures for handling classified information. 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,

100-29 Rev. 07.2015, October 2015

§ 121 MANUAL OF PATENT EXAMINING PROCEDURE

it may be taken to the Secretary of Commerce. Any 121 Handling of Applications under Secrecy
petition or appeal should be addressed to the Mail Order and/or Bearing National Security
Stop L&R, Commissioner for Patents, P.O. Box Markings [R-08.2012]
1450, Alexandria, Virginia, 22313-1450.
Applications subject to Secrecy Order will be deleted
VI. IMPROPER OR INADVERTENT DISCLOSURE from any image file system within the USPTO,
converted to paper and held with Licensing and
If, prior to or after the issuance of the Secrecy Order, Review. The application will be transferred to an
any significant part of the subject matter or material examiner designated by Licensing and Review for
information relevant to the application has been or examination. Under the current Executive Order for
is revealed to any U.S. citizen in the United States, Classified National Security Information, standards
the principals must promptly inform such person of are prescribed for the marking, handling, and care
the Secrecy Order and the penalties for improper of official information which requires safeguarding
disclosure. If such part of the subject matter was or in the interest of security.
is disclosed to any person in a foreign country or
foreign national in the U.S., the principals must not Papers marked as prescribed in the Executive Orders
inform such person of the Secrecy Order, but instead and showing that such marking is applied by, or at
must promptly furnish to Mail Stop L&R, the direction of, a government agency, are accepted
Commissioner for Patents, P.O. Box 1450, in patent applications. All applications or papers,
Alexandria, Virginia, 22313-1450 the following including non-patent literature, in the U.S. Patent
information to the extent not already furnished: date and Trademark Office bearing words such as
of disclosure; name and address of the disclosee; “Secret,” “Confidential,” “ITAR” or similar must
identification of such subject matter; and any be promptly referred to Technology Center (TC)
authorization by a U.S. government agency to export Working Group 3640 for clarification or security
such subject matter. If the subject matter is included treatment. Under no circumstances can any such
in any foreign patent application or patent, this application, drawing, exhibit, or other paper be
should be identified. placed in public records, such as the patented files,
until all security markings have been considered and
VII. EXPIRATION declassified or otherwise explained. For applications
filed with the Office bearing what appears to be
Under the provision of 35 U.S.C. 181, a Secrecy National Security Markings, the applicant will be so
Order remains in effect for a period of 1 year from notified by Licensing and Review and asked to
its date of issuance. A Secrecy Order may be explain the markings, remove such markings if
renewed for additional periods of not more than 1 improper, or obtain a Secrecy Order, if necessary.
year upon notice by a government agency that the If markings are found improper and removed, the
national interest so requires. The applicant is notified application may be referred to a defense agency if
of any such renewal. deemed necessary for review under the second
paragraph of 35 U.S.C. 181. Any application filed
The expiration of or failure to renew a Secrecy Order directly with Licensing and Review, not bearing
does not lessen in any way the responsibility of the proper security markings or Secrecy Order will be
principals for the security of the subject matter if it transmitted to scanning for incorporation as an
is subject to the provisions of Exec. Order No. 12958 electronic file in IFW and treated as a normal
or the Atomic Energy Act of 1954, as amended, application.
42 U.S.C. 141 et. seq. and 42 U.S.C. 2181 et. seq.
or other applicable law unless the principals have Authorized security markings may be placed on the
been expressly notified that the subject patent patent application drawings when filed provided that
application has been declassified by the proper such markings are outside the illustrations and that
authorities and the security markings have been they are removed when the material is declassified.
authorized to be canceled or removed. 37 CFR 1.84(v).

Rev. 07.2015, October 2015 100-30

 SECRECY, ACCESS, NATIONAL SECURITY, AND FOREIGN FILING § 140

122-129 [Reserved] 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
130 Examination of Secrecy Order Cases application. Pursuant to 37 CFR 5.1(d), if no Secrecy
Order has issued in a national security classified
[R-11.2013]
patent application, the Office will set a time period
within which the applicant must take one of the
All applications in which a Secrecy Order has been
following three actions in order to prevent
imposed are examined in a secure location by
abandonment of the application:
examiners possessing national security clearances
under the control of Licensing and Review. If the (A) obtain a Secrecy Order;
Order is imposed subsequent to the docketing of an
application in another TC, the application will be (B) declassify the application; or
transferred to an examiner designated by Licensing (C) submit evidence of a good faith effort to
and Review. obtain a Secrecy Order pursuant to 37 CFR 5.2(a).

Secrecy Order cases are examined for patentability Pursuant to 37 CFR 5.1(e), a national security
as in other cases, but will not be passed to issue; nor classified patent application will not be allowed until
will an interference or derivation be instituted where the application is declassified and any Secrecy Order
one or more of the conflicting cases is classified or pursuant to 37 CFR 5.2(a) has been rescinded.
under Secrecy Order. See 37 CFR 5.3 and MPEP §
2306. 131-139 [Reserved]

In case of a final rejection, while such action must

be properly replied to, and an appeal, if filed, must 140 Foreign Filing Licenses [R-07.2015]
be completed by the applicant to prevent
35 U.S.C. 184 Filing of application in foreign country.
abandonment, such appeal will not be set for hearing
by the Patent Trial and Appeal Board until the (a) FILING IN FOREIGN COUNTRY.—Except when
Secrecy Order is removed, unless specifically authorized by a license obtained from the Commissioner of
Patents a person shall not file or cause or authorize to be filed
ordered by the Commissioner for Patents. in any foreign country prior to six months after filing in the
United States an application for patent or for the registration of
When a Secrecy Order case is in condition for a utility model, industrial design, or model in respect of an
allowance, a notice of allowability (Form D-10) is invention made in this country. A license shall not be granted
with respect to an invention subject to an order issued by the
issued, thus closing the prosecution. See 37 CFR Commissioner of Patents pursuant to section 181 without the
5.3(c). Any amendments received thereafter are not concurrence of the head of the departments and the chief officers
entered or responded to until such time as the of the agencies who caused the order to be issued. The license
Secrecy Order is rescinded. At such time, may be granted retroactively where an application has been filed
abroad through error and the application does not disclose an
amendments which are free from objection will be
invention within the scope of section 181.
entered; otherwise they are denied entry.
(b) APPLICATION.—The term “application” when used
in this chapter includes applications and any modifications,
Due to the additional administrative burdens amendments, or supplements thereto, or divisions thereof.
associated with handling papers in Secrecy Order (c) SUBSEQUENT MODIFICATIONS, AMENDMENTS,
cases, the full statutory period for reply will AND SUPPLEMENTS.—The scope of a license shall permit
ordinarily be set for all Office actions issued on such subsequent modifications, amendments, and supplements
cases. 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
Sometimes applications bearing national security and if such modifications, amendments, and supplements do
markings but no Secrecy Order come up for not change the general nature of the invention in a manner which
examination. In this case, the examiner should would require such application to be made available for
inspection under such section 181. In any case in which a license
require the applicant to seek imposition of a Secrecy
is not, or was not, required in order to file an application in any
foreign country, such subsequent modifications, amendments,

100-31 Rev. 07.2015, October 2015

§ 140 MANUAL OF PATENT EXAMINING PROCEDURE

and supplements may be made, without a license, to the

application filed in the foreign country if the United States 37 CFR 5.11 License for filing in, or exporting to, a foreign
application was not required to be made available for inspection country an application on an invention made in the United
under section 181 and if such modifications, amendments, and States or technical data relating thereto.
supplements do not, or did not, change the general nature of the
invention in a manner which would require the United States (a) A license from the Commissioner for Patents under 35
application to have been made available for inspection under U.S.C. 184 is required before filing any application for patent
such section 181. 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 country, foreign
35 U.S.C. 185 Patent barred for filing without license. patent office, foreign patent agency, or any international agency
(other than the United States Patent and Trademark Office acting
Notwithstanding any other provisions of law any person, and as a Receiving Office for international applications (35 U.S.C.
his successors, assigns, or legal representatives, shall not receive 361 , § 1.412 ) or as an office of indirect filing for international
a United States patent for an invention if that person, or his design applications (35 U.S.C. 382 , §1.1002 )), if the invention
successors, assigns, or legal representatives shall, without was made in the United States, and:
procuring the license prescribed in section 184, have made, or
consented to or assisted another’s making, application in a (1) An application on the invention has been filed in
foreign country for a patent or for the registration of a utility the United States less than six months prior to the date on which
model, industrial design, or model in respect of the invention. the application is to be filed, or
A United States patent issued to such person, his successors, (2) No application on the invention has been filed in
assigns, or legal representatives shall be invalid, unless the the United States.
failure to procure such license was through error, and the patent
does not disclose subject matter within the scope of section 181. (b) The license from the Commissioner for Patents referred
to in paragraph (a) of this section would also authorize the export
of technical data abroad for purposes relating to the preparation,
filing or possible filing and prosecution of a foreign application
35 U.S.C. 186 Penalty.
without separately complying with the regulations contained in
Whoever, during the period or periods of time an invention has 22 CFR parts 120 through 130 (International Traffic in Arms
been ordered to be kept secret and the grant of a patent thereon Regulations of the Department of State), 15 CFR parts 730
withheld pursuant to section 181, shall, with knowledge of such through 774 (Export Administration Regulations of the Bureau
order and without due authorization, willfully publish or disclose of Industry and Security, Department of Commerce) and 10
or authorize or cause to be published or disclosed the invention, CFR part 810 (Assistance to Foreign Atomic Energy Activities
or material information with respect thereto, or whoever Regulations of the Department of Energy).
willfully, in violation of the provisions of section 184, shall file (c) Where technical data in the form of a patent application,
or cause or authorize to be filed in any foreign country an or in any form, are being exported for purposes related to the
application for patent or for the registration of a utility model, preparation, filing or possible filing and prosecution of a foreign
industrial design, or model in respect of any invention made in application, without the license from the Commissioner for
the United States, shall, upon conviction, be fined not more than Patents referred to in paragraphs (a) or (b) of this section, or on
$10,000 or imprisoned for not more than two years, or both. 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
35 U.S.C. 187 Nonapplicability to certain persons 730 through 774 (Export Administration Regulations of the
Bureau of Industry and Security, Department of Commerce)
The prohibitions and penalties of this chapter shall not apply to and 10 CFR part 810 (Assistance to Foreign Atomic Energy
any officer or agent of the United States acting within the scope Activities Regulations of the Department of Energy) must be
of his authority, nor to any person acting upon his written complied with unless a license is not required because a United
instructions or permission. States application was on file at the time of export for at least
six months without a secrecy order under § 5.2 being placed
thereon. The term “exported” means export as it is defined in
35 U.S.C. 188 Rules and regulations, delegation of power. 22 CFR part 120, 15 CFR part 734 and activities covered by 10
CFR part 810.
The Atomic Energy Commission, the Secretary of a defense
(d) If a secrecy order has been issued under § 5.2, an
department, the chief officer of any department or agency of
application cannot be exported to, or filed in, a foreign country
the Government designated by the President as a defense agency
(including an international agency in a foreign country), except
of the United States, and the Secretary of Commerce, may
in accordance with § 5.5.
separately issue rules and regulations to enable the respective
department or agency to carry out the provisions of this chapter, (e) No license pursuant to paragraph (a) of this section is
and may delegate any power conferred by this chapter. required:
(1) If the invention was not made in the United States,
or

Rev. 07.2015, October 2015 100-32

 SECRECY, ACCESS, NATIONAL SECURITY, AND FOREIGN FILING § 140

(b) Two or more United States applications should not be

(2) If the corresponding United States application is
referred to in the same petition for license unless they are to be
not subject to a secrecy order under § 5.2, and was filed at least
combined in the foreign or international application, in which
six months prior to the date on which the application is filed in
event the petition should so state and the identification of each
a foreign country, or
United States application should be in separate paragraphs.
(3) For subsequent modifications, amendments and
(c) Where the application to be filed or exported abroad
supplements containing additional subject matter to, or divisions
contains matter not disclosed in the United States application
of, a foreign patent application if:
or applications, including the case where the combining of two
(i) A license is not, or was not, required under or more United States applications introduces subject matter
paragraph (e)(2) of this section for the foreign application; not disclosed in any of them, a copy of the application as it is
(ii) The corresponding United States application to be filed or exported abroad, must be furnished with the
was not required to be made available for inspection under petition. If, however, all new matter in the application to be filed
35 U.S.C. 181; and or exported is readily identifiable, the new matter may be
submitted in detail and the remainder by reference to the
(iii) Such modifications, amendments, and pertinent United States application or applications.
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 37 CFR 5.15 Scope of license.
inspection under 35 U.S.C. 181. (a) Applications or other materials reviewed pursuant to
(f) A license pursuant to paragraph (a) of this section can §§ 5.12 through 5.14, which were not required to be made
be revoked at any time upon written notification by the United available for inspection by defense agencies under 35 U.S.C.
States Patent and Trademark Office. An authorization to file a 181, will be eligible for a license of the scope provided in this
foreign patent application resulting from the passage of six paragraph. This license permits subsequent modifications,
months from the date of filing of a United States patent amendments, and supplements containing additional subject
application may be revoked by the imposition of a secrecy order. 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
37 CFR 5.12 Petition for license. application to have been made available for inspection under
(a) Filing of an application on an invention made in the 35 U.S.C. 181. Grant of this license authorizes the export and
United States will be considered to include a petition for license filing of an application in a foreign country or to any foreign
under 35 U.S.C. 184 for the subject matter of the application. patent agency or international patent agency when the subject
The filing receipt or other official notice will indicate if a license matter of the foreign application corresponds to that of the
is granted. If the initial automatic petition is not granted, a domestic application. This license includes authority:
subsequent petition may be filed under paragraph (b) of this (1) To export and file all duplicate and formal
section. application papers in foreign countries or with international
(b) A petition for license must include the fee set forth in agencies;
§ 1.17(g) of this chapter, the petitioner’s address, and full (2) To make amendments, modifications, and
instructions for delivery of the requested license when it is to supplements, including divisions, changes or supporting matter
be delivered to other than the petitioner. The petition should be consisting of the illustration, exemplification, comparison, or
presented in letter form. explanation of subject matter disclosed in the application; and
(3) To take any action in the prosecution of the foreign
37 CFR 5.13 Petition for license; no corresponding application provided that the adding of subject matter or taking
application. of any action under paragraphs (a)(1) or (2) of this section does
not change the general nature of the invention disclosed in the
If no corresponding national, international design, or application in a manner that would require such application to
international application has been filed in the United States, the have been made available for inspection under 35 U.S.C. 181
petition for license under § 5.12(b) must also be accompanied by including technical data pertaining to:
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. (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
37 CFR 5.14 Petition for license; corresponding U.S.
120 through 130; or
application.
(ii) Restricted Data, sensitive nuclear technology
(a) When there is a corresponding United States application
or technology useful in the production or utilization of
on file, a petition for license under § 5.12(b) must also identify
special nuclear material or atomic energy, dissemination of
this application by application number, filing date, inventor,
which is subject to restrictions of the Atomic Energy Act of
and title, but a copy of the material upon which the license is
1954, as amended, and the Nuclear Non-Proliferation Act of
desired is not required. The subject matter licensed will be
1978, as implemented by the regulations for Assistance to
measured by the disclosure of the United States application.
Foreign Atomic Energy Activities, 10 CFR part 810, in effect
at the time of foreign filing.

100-33 Rev. 07.2015, October 2015

§ 140 MANUAL OF PATENT EXAMINING PROCEDURE

(b) Applications or other materials which were required to International Traffic in Arms Regulations of the Department of
be made available for inspection under 35 U.S.C. 181 will be State (22 CFR parts 120 through 130); the articles designated
eligible for a license of the scope provided in this paragraph. as arms, ammunitions, and implements of war are enumerated
Grant of this license authorizes the export and filing of an in the U.S. Munitions List (22 CFR part 121). However, if a
application in a foreign country or to any foreign patent agency patent applicant complies with regulations issued by the
or international patent agency. Further, this license includes Commissioner for Patents under 35 U.S.C. 184, no separate
authority to export and file all duplicate and formal papers in approval from the Department of State is required unless the
foreign countries or with foreign and international patent applicant seeks to export technical data exceeding that used to
agencies and to make amendments, modifications, and support a patent application in a foreign country. This exemption
supplements to, file divisions of, and take any action in the from Department of State regulations is applicable regardless
prosecution of the foreign application, provided subject matter of whether a license from the Commissioner for Patents is
additional to that covered by the license is not involved. required by the provisions of §§ 5.11 and 5.12 (22 CFR part
125).
(c) A license granted under § 5.12(b) pursuant to § 5.13 or
§ 5.14 shall have the scope indicated in paragraph (a) of this (b) When a patent application containing subject matter on
section, if it is so specified in the license. A petition, the Munitions List (22 CFR part 121) is subject to a secrecy
accompanied by the required fee (§ 1.17(g) of this chapter), may order under § 5.2 and a petition is made under § 5.5 for a
also be filed to change a license having the scope indicated in modification of the secrecy order to permit filing abroad, a
paragraph (b) of this section to a license having the scope separate request to the Department of State for authority to
indicated in paragraph (a) of this section. No such petition will export classified information is not required (22 CFR part 125).
be granted if the copy of the material filed pursuant to § 5.13
or any corresponding United States application was required to
be made available for inspection under 35 U.S.C. 181. The 37 CFR 5.19 Export of technical data.
change in the scope of a license will be effective as of the date (a) Under regulations (15 CFR 734.3(b)(1)(v)) established
of the grant of the petition. by the Department of Commerce, a license is not required in
(d) In those cases in which no license is required to file or any case to file a patent application or part thereof in a foreign
export the foreign application, no license is required to file country if the foreign filing is in accordance with the regulations
papers in connection with the prosecution of the foreign (§§ 5.11 through 5.25) of the U.S. Patent and Trademark Office.
application not involving the disclosure of additional subject (b) An export license is not required for data contained in
matter. a patent application prepared wholly from foreign-origin
(e) Any paper filed abroad or transmitted to an international technical data where such application is being sent to the foreign
patent agency following the filing of a foreign application that inventor to be executed and returned to the United States for
changes the general nature of the subject matter disclosed at the subsequent filing in the U.S. Patent and Trademark Office (15
time of filing in a manner which would require such application CFR 734.10(a)).
to have been made available for inspection under 35 U.S.C. 181
or which involves the disclosure of subject matter listed in 37 CFR 5.20 Export of technical data relating to sensitive
paragraphs (a)(3)(i) or (ii) of this section must be separately nuclear technology.
licensed in the same manner as a foreign application. Further,
if no license has been granted under § 5.12(a) on filing the Under regulations (10 CFR 810.7) established by the United
corresponding United States application, any paper filed abroad States Department of Energy, an application filed in accordance
or with an international patent agency that involves the with the regulations (§§ 5.11 through 5.25) of the Patent and
disclosure of additional subject matter must be licensed in the Trademark Office and eligible for foreign filing under 35 U.S.C.
same manner as a foreign application. 184, is considered to be information available to the public in
published form and a generally authorized activity for the
(f) Licenses separately granted in connection with two or
purposes of the Department of Energy regulations.
more United States applications may be exercised by combining
or dividing the disclosures, as desired, provided:
(1) Subject matter which changes the general nature 37 CFR 5.25 Petition for retroactive license.
of the subject matter disclosed at the time of filing or which
involves subject matter listed in paragraphs (a)(3) (i) or (ii) of (a) A petition for retroactive license under 35 U.S.C. 184
this section is not introduced and, shall be presented in accordance with § 5.13 or § 5.14(a), and
shall include:
(2) In the case where at least one of the licenses was
obtained under § 5.12(b), additional subject matter is not (1) A listing of each of the foreign countries in which
introduced. the unlicensed patent application material was filed,

(g) A license does not apply to acts done before the license (2) The dates on which the material was filed in each
was granted. See § 5.25 for petitions for retroactive licenses. country,
(3) A verified statement (oath or declaration)
containing:
37 CFR 5.18 Arms, ammunition, and implements of war.
(i) An averment that the subject matter in question
(a) The exportation of technical data relating to arms,
was not under a secrecy order at the time it was filed aboard
ammunition, and implements of war generally is subject to the
[sic], and that it is not currently under a secrecy order,

Rev. 07.2015, October 2015 100-34

 SECRECY, ACCESS, NATIONAL SECURITY, AND FOREIGN FILING § 140

There are two ways in which permission to file an

(ii) A showing that the license has been diligently
sought after discovery of the proscribed foreign filing, and application abroad may be obtained: either a petition
for a foreign filing license may be granted (37 CFR
(iii) An explanation of why the material was filed
abroad through error without the required license under § 5.11 5.12) or an applicant may wait 6 months after filing
first having been obtained, and an application in the USPTO (35 U.S.C. 184) at
(4) The required fee (§ 1.17(g) of this chapter). which time a license on that subject matter is no
longer required as long as no Secrecy Order has been
(b) The explanation in paragraph (a) of this section must
include a showing of facts rather than a mere allegation of action imposed. 37 CFR 5.11(e)(2).
through error. The showing of facts as to the nature of the error
should include statements by those persons having personal There are several means by which a foreign filing
knowledge of the acts regarding filing in a foreign country and license may be issued. First, every U.S. origin
should be accompanied by copies of any necessary supporting
documents such as letters of transmittal or instructions for filing. application filed in the USPTO is considered to
The acts which are alleged to constitute error should cover the include an implicit petition for a foreign filing
period leading up to and including each of the proscribed foreign license. The grant of a license is not immediate or
filings. even ensured. If the application is not marked by the
(c) If a petition for a retroactive license is denied, a time security screeners, the petition is granted. The filing
period of not less than thirty days shall be set, during which the receipt or other official notice will indicate if a
petition may be renewed. Failure to renew the petition within
foreign filing license is granted. The license becomes
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 effective on the date shown. Further, grant of this
§ 1.181 within two months of the date of the denial. If the license is made of record in the application file. The
petition for a retroactive license is denied with respect to the scope of this license is quite broad as set forth in 37
invention of a pending application and no petition under § 1.181 CFR 5.15(a).
has been filed, a final rejection of the application under 35
U.S.C. 185 will be made.
I. EXPEDITED FOREIGN FILING LICENSE

In the interests of national security, the United States Explicit petitions for foreign filing licenses will also
government imposes restrictions on the export of be accepted in accordance with 37 CFR 5.12(b).
technical information. These restrictions are Such petitions may be hand carried to the Office,
administered by the Departments of Commerce, faxed to Licensing and Review, or submitted via
State, and/or Energy depending on the subject matter EFS-Web. See MPEP §§ 502, 502.01 and 502.05.
involved. For the filing of patent applications and Applicants may be interested in such petitions in
registrations of industrial designs in foreign cases:
countries, the authority for export control has been
delegated to the Commissioner for Patents (note that (A) in which the filing receipt license is not
the term “Commissioner of Patents” is used in granted;
Chapter 17 of title 35 of the U.S. Code, but
(B) in which the filing receipt has not yet been
“Commissioner for Patents” is used in most of the
issued (37 CFR 5.14(a) or (b));
remainder of the statute and throughout title 37 of
the Code of Federal Regulations; both titles are (C) in which there is no corresponding U.S.
understood to represent the same individual). Note application (37 CFR 5.13);
that the export of subject matter abroad for purposes (D) in which subject matter additional to that
not related to foreign filing of a patent application already licensed is sought to be licensed (37 CFR
or a registration of an industrial design, such as 5.14(c) and 5.15(e)); or
preparing an application in a foreign country for
subsequent filing in the USPTO is not covered by (E) in which expedited handling is requested.
any license from the USPTO. Applicants are directed The scope of any license granted on these petitions
to the Bureau of Industry and Security at the is indicated on the license.
Department of Commerce for the appropriate
clearances. Petitions under 37 CFR 5.14(a) or (b) as well as any
license granted on the petition are made of record

100-35 Rev. 07.2015, October 2015

§ 141-149 MANUAL OF PATENT EXAMINING PROCEDURE

in the application file. Petitions under 37 CFR necessarily mean that a petition under 37 CFR
5.14(c) are not ordinarily made of record in the 5.12(b) for a license of narrower scope will not be
application file. granted. The revocation becomes effective on the
date on which the notice is mailed. Foreign filings,
Applicants granted a license under 37 CFR 5.12(b) which occurred prior to revocation, need not be
having the relatively narrow scope indicated in abandoned or otherwise specially treated; however,
37 CFR 5.15(b) may petition under 37 CFR 5.15(c) additional filings without a license are not permitted
to convert the license to the broad scope of 37 CFR unless 6 months have elapsed from the filing of any
5.15(a). A fee is charged for such a petition. See 37 corresponding U.S. application. Papers and other
CFR 1.17(g). If the petition is granted, the change documents needed in support of prosecution of
in the scope of the license is effective as of that day. foreign applications may be sent abroad if they
comply with any pertinent export regulations. Of
Generally, a license will be granted, if there is no course, if and once a Secrecy Order is issued, the
national security concern, within 3 business days restrictions thereof must immediately be observed.
from receipt of the expedited petition (filed under
37 CFR 5.12(b)) in Licensing and Review. Only the imposition of a Secrecy Order will cause
Applicants are strongly encouraged to hand deliver revocation of the authority which arises from 35
or fax the license request directly to Licensing and U.S.C. 184 to file a foreign patent application 6
Review at 571-273-0185. Applicants should also months or later after the date of filing of a
provide a contact number or fax number to which corresponding U.S. patent application.
the license should be sent. Without this information,
the license will be mailed to the requester, thereby The penalties for failing to obtain any necessary
delaying the receipt of the license. 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.
II. RETROACTIVE LICENSES 186 and include loss of patenting rights in addition
to possible fine or imprisonment. Petitions for
A petition for a retroactive filing license may be filed retroactive foreign filing licenses are processed by
under 37 CFR 5.25 if an unlicensed foreign filing Licensing and Review and decided by the Office of
has occurred through error. However, the Petitions. See MPEP § 1002.02(b). If applicant also
requirements of 37 CFR 5.25 must be fulfilled in wishes an expedited license for future filings, a
order for such a petition to be granted. Note that for separate expedited license request must be filed with
petitions filed prior to September 16, 2012, the Licensing and Review.
petition must specify that the error occurred without
deceptive intent (see pre-AIA 37 CFR 5.25(a)(3)(iii) 141-149 [Reserved]
and (b)). 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 150 Statements to DOE and NASA
of filing and the establishing of the nature of the
[R-11.2013]
error must be provided for each act of proscribed
foreign filing for which a retroactive license is 37 CFR 1.14 Patent applications preserved in confidence.
sought. Also, the required verified statement must *****
be in oath or declaration form.
(d) Applications reported to Department of Energy.
Applications for patents which appear to disclose, purport to
Upon written notification from the USPTO, any disclose or do disclose inventions or discoveries relating to
foreign filing license required by 37 CFR 5.11(a) atomic energy are reported to the Department of Energy, which
Department will be given access to the applications. Such
may be revoked. Ordinarily, revocation indicates
reporting does not constitute a determination that the subject
that additional review of the licensed subject matter matter of each application so reported is in fact useful or is an
revealed the need for referral of the application to invention or discovery, or that such application in fact discloses
the appropriate defense agencies. Revocation of a subject matter in categories specified by 42 U.S.C. 2181(c) and
filing receipt license (37 CFR 5.12(a)) does not (d).
*****

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 SECRECY, ACCESS, NATIONAL SECURITY, AND FOREIGN FILING § 151

Title 42 United States Code, Section 2182 reads in Property rights statements to DOE or NASA may
part: be filed at any time but should be updated if
necessary to accurately reflect property rights at the
42 U.S.C. 2182 Inventions conceived during Commission
contracts; ownership; waiver; hearings
time the application is allowed.
*****
Shortly after filing, an informal request for a property
No patent for any invention or discovery, useful in the rights statement will be mailed to those applicants
production or utilization of special nuclear material or atomic whose nonprovisional applications have been marked
energy, shall be issued unless the applicant files with the
application, or within thirty days after request therefor by the
by the USPTO security screeners as being of interest
Under Secretary of Commerce for Intellectual Property and to DOE or NASA. Provisional applications are not
Director of the United States Patent and Trademark Office subject to DOE or NASA property rights review.
(unless the Commission advises the Under Secretary of While no formal time period is set, a response by
Commerce for Intellectual Property and Director of the United applicants within 45 days will expedite processing.
States Patent and Trademark Office that its rights have been
determined and that accordingly no statement is necessary) a If the statement submitted during this period is
statement under oath setting forth the full facts surrounding the defective, another letter is sent from Licensing and
making or conception of the invention or discovery described Review detailing the deficiencies and giving
in the application and whether the invention or discovery was applicant another opportunity to respond during this
made or conceived in the course of or under any contract,
subcontract, or arrangement entered into with or for the benefit
period of informal correspondence.
of the Commission, regardless of whether the contract,
subcontract, or arrangement involved the expenditure of funds If no response to the initial so called 45-Day Letter
by the Commission. The Under Secretary of Commerce for is received or if repeated efforts to correct a defective
Intellectual Property and Director of the United States Patent
and Trademark Office shall as soon as the application is
statement evidence an absence of cooperation on the
otherwise in condition for allowance forward copies of the part of the applicant, a formal request for a statement
application and the statement to the Commission. 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,
Similarly, Title 51 United States Code, section 20135 the application will be held abandoned and the
provides in part: applicant so notified. Such applications may be
revived under the provisions of 37 CFR 1.137. In
51 U.S.C. 20135 Property rights in inventions re Rutan, 231 USPQ 864 (Comm’r Pat. 1986).
*****

(d) Patent Application. - No patent may be issued to any

Any papers pertaining to property rights under
applicant other than the Administrator for any invention which section 152 of the Atomic Energy Act, 42 U.S.C.
appears to the Under Secretary of Commerce for Intellectual 2182, (DOE), or section 305(c) or the National
Property and Director of the United States Patent and Trademark Aeronautics and Space Act, 42 U.S.C. 2457,
Office (hereafter in this section referred to as the "Director") to (NASA), that have not been associated with the
have significant utility in the conduct of aeronautical and space
activities unless the applicant files with the Director, with the application file, or have not been made of record in
application or within 30 days after request therefor by the the file and processed by the Licensing and Review
Director, a written statement executed under oath setting forth section, must be sent to the Licensing and Review
the full facts concerning the circumstances under which the section immediately.
invention was made and stating the relationship (if any) of the
invention to the performance of any work under any contract
of the Administration. Copies of each such statement and the 151 Content of the Statements [R-11.2013]
application to which it relates shall be transmitted forthwith by
the Director to the Administrator.
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

100-37 Rev. 07.2015, October 2015

§ 151 MANUAL OF PATENT EXAMINING PROCEDURE

broad generalized statements of fact is not ordinarily who has sufficient knowledge of the facts. The offer
regarded as meeting the requirements of these of such substitute statements should be based on the
statutes. actual unavailability of or refusal by the applicant,
rather than mere inconvenience. Where it is shown
The word “applicant” in both of these statutes is that one of the joint inventors is deceased or
construed by the Office to mean the inventor or joint unavailable, a statement by all of the other
inventors in person, or an assignee, obligated inventor(s) may be accepted.
assignee, or a person who otherwise shows sufficient
proprietary interest in the matter. Accordingly, in The following is an acceptable format for statements
the ordinary situation, the statements must be signed to DOE or NASA assuming that no government
by the inventor or the joint inventors, or an assignee, funds or other considerations were involved in the
obligated assignee, or a person who otherwise shows making or conception of the invention. It is important
sufficient proprietary interest in the matter if that the information provided in the statement be an
available. This construction is consistent with the accurate reflection of the fact situation at the time
fact that no other person could normally be more the statement is made. While the sample below is in
knowledgeable of the “full facts concerning the the form of a declaration, a sworn oath is equally
circumstances under which such invention was acceptable.
made,” (42 U.S.C. 2457) or, “full facts surrounding
the making or conception of the invention or Note that the statement must be in the form of an
discovery” (42 U.S.C. 2182). If a request under 37 oath or declaration. Further note that the statement
CFR 1.48 for correction of inventorship is granted must be signed by all the inventors. See also the
during pendency of an application in which a notice entitled “Statements Filed Under Atomic
property rights statement has been filed, a Energy Act and NASA Act” published in 914 OG
supplemental statement executed by any added 1 (Sept. 4, 1973) for further information.
inventor(s) is required and should promptly be filed
with Licensing and Review. I (We) _____________________ citizens of
residing at declare: That I (we) made and
In instances where an applicant does not have conceived the invention described and claimed
firsthand knowledge whether the invention involved in patent application number filed in the United
work under any contract, subcontract, or arrangement States of America on titled.
with or for the benefit of the Atomic Energy I (We) ________________ citizens of
Commission, or had any relationship to any work ________________ residing at
under any contract of the National Aeronautics and ________________ declare: That I (we) made
Space Administration, and includes in his or her and conceived the invention described and
statement information of this nature derived from claimed in patent application number
others, his or her statement should identify the source ________________ filed in the United States
of his or her information. Alternatively, the statement of America on ________________ titled
by the applicant could be accompanied by a ________________.
supplemental declaration or oath, as to the (Include completed I. or II. below)
contractual matters, by the assignee or other person, I. (for Inventors Employed by an Organization)
e.g., an employee thereof, who has the requisite That I (we) made and conceived this invention
knowledge. while employed by ________________.
That the invention is related to the work I am
When an inventor applicant is deceased or legally (we are) employed to perform and was made
incapacitated, or where it is shown to the satisfaction within the scope of my (our) employment
of this Office that he or she refuses to furnish a duties;
statement or cannot be reached after diligent efforts, That the invention was made during working
declarations or statements under oath setting forth hours and with the use of facilities, equipment,
the information required by the statutes may be materials, funds, information and services of
accepted from an officer or employee of the assignee ________________.

Rev. 07.2015, October 2015 100-38

 SECRECY, ACCESS, NATIONAL SECURITY, AND FOREIGN FILING § 151

Other relevant facts are: ________________.

That to the best of my (our) knowledge and
belief based upon information provided by
________________ of ________________:
-OR-
II. (For Self-Employed Inventors)
That I (we) made and conceived this invention
on my (our) own time using only my (our) own
facilities, equipment, materials, funds,
information and services.
Other relevant facts are ________________
That to the best of my (our) knowledge and
belief:
(Include III. and/or IV. below as appropriate)
III. The invention or discovery was not made
or conceived in the course of, or in connection
with, or under the terms of any contract,
subcontract or arrangement entered into with
or for the benefit of the United States Atomic
Energy Commission or its successors Energy
Research and Development Administration or
the Department of Energy.
-AND/OR-
IV. The invention was not made under nor is
there any relationship of the invention to the
performance of any work under any contract
of the National Aeronautics and Space
Administration.
V. The undersigned inventor(s) declare(s)
further that all statements made herein of his
or her (their)own knowledge are true and that
all statements made on information and belief
are believed to be true and further that these
statements were made with the knowledge that
willful false statements and the like so made
are punishable by fine or imprisonment, or
both, under Section 1001 of Title 18 of the
United States Code and that such willful false
statements may jeopardize the validity of the
application or any patent issuing thereon.
Inventor’s Signature________________
Post Office Address________________
Date________________
Inventor’ s Signature________________
Post Office Address________________
Date________________

100-39 Rev. 07.2015, October 2015