Editing MPEP 100

{{MPEP Chapter||200}}

'''<big>Chapter 100 Secrecy, Access, National Security, and Foreign Filing</big>'''

<div class="noautonum">__TOC__</div>

== 101 General== 

35 U.S.C. 122. Confidential status of applications; 
publication of patent applications.

(a)CONFIDENTIALITY.— Except as provided in subsection 
(b), applications for patents shall be kept in confidence by the 
Patent and Trademark Office and no information concerning the 
same given without authority of the applicant or owner unless 
necessary to carry out the provisions of an Act of Congress or in 
such special circumstances as may be determined by the Director.

(b)PUBLICATION.— 

(1)IN GENERAL.— 

(A)Subject to paragraph (2), each application for a 
patent shall be published, in accordance with procedures determined 
by the Director, promptly after the expiration of a period of 
18 months from the earliest filing date for which a benefit is 
sought under this title. At the request of the applicant, an application 
may be published earlier than the end of such 18-month 
period.

(B)No information concerning published patent applications 
shall be made available to the public except as the Director 
determines.

(C)Notwithstanding any other provision of law, a 
determination by the Director to release or not to release information 
concerning a published patent application shall be final and 
nonreviewable.

(2)EXCEPTIONS.— 

(A)An application shall not be published if that application 
is— 

(i)no longer pending;

(ii)subject to a secrecy order under section 181 of 
this title;

(iii)a provisional application filed under section 
111(b) of this title; or

(iv)an application for a design patent filed under 
chapter 16 of this title.

(B)(i) If an applicant makes a request upon filing, certifying 
that the invention disclosed in the application has not and 
will not be the subject of an application filed in another country, 
or under a multilateral international agreement, that requires publication 
of applications 18 months after filing, the application 
shall not be published as provided in paragraph (1).

(ii)An applicant may rescind a request made under 
clause (i) at any time.

(iii)An applicant who has made a request under 
clause (i) but who subsequently files, in a foreign country or under 
a multilateral international agreement specified in clause (i), an 
application directed to the invention disclosed in the application 
filed in the Patent and Trademark Office, shall notify the Director 
of such filing not later than 45 days after the date of the filing of 
such foreign or international application. A failure of the applicant 
to provide such notice within the prescribed period shall result in 
the application being regarded as abandoned, unless it is shown to 
the satisfaction of the Director that the delay in submitting the 
notice was unintentional.

(iv)If an applicant rescinds a request made under 
clause (i) or notifies the Director that an application was filed in a 
foreign country or under a multilateral international agreement 
specified in clause (i), the application shall be published in accordance 
with the provisions of paragraph (1) on or as soon as is 
practical after the date that is specified in clause (i).

(v)If an applicant has filed applications in one or 
more foreign countries, directly or through a multilateral international 
agreement, and such foreign filed applications corresponding 
to an application filed in the Patent and Trademark Office or 
the description of the invention in such foreign filed applications 
is less extensive than the application or description of the invention 
in the application filed in the 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 of the corresponding applications filed in a foreign 
country. The Director may only publish the redacted copy of 
the application unless the redacted copy of the application is not 
received within 16 months after the earliest effective filing date 
for which a benefit is sought under this title. The provisions of 
section 154(d) shall not apply to a claim if the description of the 
invention published in the redacted application filed under this 
clause with respect to the claim does not enable a person skilled in 
the art to make and use the subject matter of the claim.

(c)PROTEST AND PRE-ISSUANCE OPPOSITION.— 
The Director shall establish appropriate procedures to ensure that 
no protest or other form of pre-issuance opposition to the grant of 
a patent on an application may be initiated after publication of the 
application without the express written consent of the applicant.

(d)NATIONAL SECURITY.— No application for patent 
shall be published under subsection (b)(1) if the publication or 
disclosure of such invention would be detrimental to the national 
security. The Director shall establish appropriate procedures to 
ensure that such applications are promptly identified and the 
secrecy of such inventions is maintained in accordance with chapter 
17 of this title.

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

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

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



37 CFR 1.11. Files open to the public.

(a)The specification, drawings, and all papers relating to the 
file of: A published application; a patent; or a statutory invention 
registration are open to inspection by the public, and copies may 
be obtained upon the payment of the fee set forth in § 1.19(b)(2). 
If an application was published in redacted form pursuant to § 
1.217, the complete file wrapper and contents of the patent application 
will not be available if: The requirements of paragraphs 
(d)(1), (d)(2), and (d)(3) of § 1.217 have been met in the application; 
and the application is still pending. See § 2.27 of this title for 
trademark files.





37 CFR 1.14. Patent applications preserved in confidence. 

(a)Confidentiality of patent application information. Patent 
applications that have not been published under 35 U.S.C. 122(b)
are generally preserved in confidence pursuant to 35 U.S.C. 
122(a). Information concerning the filing, pendency, or subject 
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.

(1)Records associated with patent applications (see paragraph 
(g) for international applications) may be available in the 
following situations:

(i)Patented applications and statutory invention registrations. 
The file of an application that has issued as a patent or 
published as a statutory invention registration is available to the 
public as set forth in §1.11(a). A copy of the patent application-as-
filed, the file contents of the application, or a specific document in 
the file of such an application may be provided upon request and 
payment of the appropriate fee set forth in § 1.19(b). 

(ii)Published abandoned applications. The file of an 
abandoned application that has been published as a patent application 
publication is available to the public 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 person upon request, 
and payment of the appropriate fee set forth in § 1.19(b).

(iii)Published pending applications. A copy of the 
application-as-filed, the file contents of the application, or a specific 
document in the file of a pending application that has been 
published as a patent application publication may be provided to 
any person upon request, and payment of the appropriate fee set 
forth in § 1.19(b). If a redacted copy of the application was used 
for the patent application publication, the copy of the specification, 
drawings, and papers may be limited to a redacted copy. The 
Office will not provide access to the paper file of a pending application 
that has been published, except as provided in paragraph 
(c) or (h) of this section.

(iv)Unpublished abandoned applications (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, a U.S. patent application 
publication, or an international patent application publication 
of an international application that was published in 
accordance with PCT Article 21(2). An application is considered 
to have been identified in a document, such as a patent, when the 
application number or serial number and filing date, first named 
inventor, title and filing date or other application specific 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 the patent 
and is not included in the printed patent. Also, the file contents 
may be made available to the public, upon a written request, if 
benefit of the abandoned application is claimed under 35 U.S.C. 
119(e), 120, 121, or 365 in an application that has issued as a U.S. 
patent, or has published as a statutory invention registration, a 
U.S. patent application publication, or an international patent 
application that was published in accordance with PCT Article 
21(2). A copy of the application-as-filed, the file contents of the 
application, or a specific document in the file of the application 
may be provided to any person upon written request, and payment 
of the appropriate fee (§ 1.19(b)).

(v)Unpublished pending applications (including provisional 
applications) whose benefit is claimed. A copy of the file 
contents 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 benefit of the application is claimed 
under 35 U.S.C. 119(e), 120, 121, or 365 in an application that has 
issued as a U.S. patent, an application that has published as a statutory 
invention registration, a U.S. patent application publication, 
or an international patent application publication that was published 
in accordance with PCT Article 21(2). A copy of the application-
as-filed, or a specific document in the file of the pending 
application may also be provided to any person upon written 
request, and payment of the appropriate fee (§ 1.19(b)). The 
Office will not provide access to the paper file of a pending application, 
except as provided in paragraph (c) or (h) of this section.

(vi)Unpublished pending applications (including provisional 
applications) that are incorporated by reference or otherwise 
identified. A copy of the application as originally 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, or an international patent 
application publication that was published in accordance with 
PCT Article 21(2). The Office will not provide access to the paper 
file of a pending application, except as provided in paragraph (c) 
or (h) of this section.

(vii)When a petition for access or a power to inspect is 
required. Applications that were not published or patented, that 
are not the subject of a benefit claim under 35 U.S.C. 119(e), 120, 
121, or 365 in an application that has issued as a U.S. patent, an 
application that has published as a statutory invention registration, 
a U.S. patent application publication, or an international patent 
application publication that was published in accordance with 
PCT Article 21(2), or are not identified in a U.S. patent, a statutory 
invention registration, a U.S. patent application publication, 
or an international patent application that was published in accordance 
with PCT Article 21(2), are not available to the public. If an 
application is identified in the file contents of another application, 
but not the published patent application or patent itself, a granted 
petition for access (see paragraph (h)) or a power to inspect (see 
paragraph (c)) is necessary to obtain the application, or a copy of 
the application.

(2) Information concerning a patent application may be 
communicated to the public if the patent application is identified 
in paragraphs (a)(1)(i) through (a)(1)(vi) of this section. The information 
that may be communicated to the public (i.e., status information) 
includes:

(i)Whether the application is pending, abandoned, or 
patented;

(ii)Whether the application has been published under 
35 U.S.C. 122(b);

(iii)The application “numerical identifier” which may 
be: 

(A)The eight-digit application number (the two-
digit series code plus the six-digit serial number); or 

(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 

(iv)Whether another application claims the benefit of 
the application (i.e., whether there are any applications that claim 
the benefit of the filing date under 35 U.S.C. 119(e), 120, 121 or 
365 of the application), and if there are any such applications, the 
numerical identifier of the application, the specified relationship 
between the applications (e.g., continuation), whether the application 
is pending, abandoned or patented, and whether the application 
has been published under 35 U.S.C. 122(b).

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

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

Interoffice mail must be sent in appropriate envelopes.

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

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

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

Whenever an application, or an artifact file in an 
Image File Wrapper (IFW) application, is removed 
from the operating area having custody of the file, a 
charge on the PALM system must be properly and 
promptly made.

Official papers are accepted only at a central delivery 
window, except for certain papers that have been 
specifically exempted from the central delivery policy. 
See MPEP § 502. Papers for non-Image File 
Wrapper (IFW) applications are forwarded to the 
Technology Center (TC) and must be properly and 
promptly placed within the appropriate files. If papers 
are received with faulty identifications, this should be 
corrected at once. If papers are received at a destination 
for which they are not intended due to faulty 
identification or routing, appropriate corrective action 
should be taken at once to ensure the prompt receipt 
thereof at destination. See MPEP § 508.01 and 
§ 508.03. Similarly, for IFW messages with faulty 
identifications or incorrect routing, appropriate corrective 
action should be taken at once to ensure the 
prompt receipt thereof at the appropriate destination. 
For IFW processing, see the IFW Manual.

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

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

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

Extreme care should be taken to prevent inadvertent 
and/or inappropriate disclosure of the filing date 
or application number of any application. This applies 
not only to Office actions but also to notes (usually in 
pencil) in the file wrapper or in the artifact folder of 
IFW applications. 

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

37 CFR 1.14. Patent applications preserved in confidence. 

(a)Confidentiality of patent application information. Patent 
applications that have not been published under 35 U.S.C. 122(b)
are generally preserved in confidence pursuant to 35 U.S.C. 
122(a). Information concerning the filing, pendency, or subject 
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.

(2)Information concerning a patent application may be 
communicated to the public if the patent application is identified 
in paragraphs (a)(1)(i) through (a)(1)(vi) of this section. The information 
that may be communicated to the public (i.e., status information) 
includes:

(i)Whether the application is pending, abandoned, or 
patented;

(ii)Whether the application has been published under 
35 U.S.C. 122(b);

(iii)The application “numerical identifier” which may 
be: 

(A)The eight-digit application number (the two-
digit series code plus the six-digit serial number); or 

(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 

(iv)Whether another application claims the benefit of 
the application (i.e., whether there are any applications that claim 
the benefit of the filing date under 35 U.S.C. 119(e), 120, 121 or 
365 of the application), and if there are any such applications, the 
numerical identifier of the application, the specified relationship 
between the applications (e.g., continuation), whether the application 
is pending, abandoned or patented, and whether the application 
has been published under 35 U.S.C. 122(b). 

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

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

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

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

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

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

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

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

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

(C)Return the call using the telephone number as 
specified below.

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

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

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

==102 Information as to Status of an Application==

37 CFR 1.14. Patent applications preserved in confidence. 

(a)Confidentiality of patent application information. Patent 
applications that have not been published under 35 U.S.C. 122(b)
are generally preserved in confidence pursuant to 35 U.S.C. 
122(a). Information concerning the filing, pendency, or subject 
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.

(1)Records associated with patent applications (see paragraph 
(g) for international applications) may be available in the 
following situations:

(i)Patented applications and statutory invention registrations. 
The file of an application that has issued as a patent or 
published as a statutory invention registration is available to the 
public as set forth in §1.11(a). A copy of the patent application-as-
filed, the file contents of the application, or a specific document in 
the file of such an application may be provided upon request and 
payment of the appropriate fee set forth in § 1.19(b). 

(ii)Published abandoned applications. The file of an 
abandoned application that has been published as a patent application 
publication is available to the public 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 person upon request, 
and payment of the appropriate fee set forth in § 1.19(b).

(iii)Published pending applications. A copy of the 
application-as-filed, the file contents of the application, or a specific 
document in the file of a pending application that has been 
published as a patent application publication may be provided to 
any person upon request, and payment of the appropriate fee set 
forth in § 1.19(b). If a redacted copy of the application was used 
for the patent application publication, the copy of the specification, 
drawings, and papers may be limited to a redacted copy. The 
Office will not provide access to the paper file of a pending appli
cation that has been published, except as provided in paragraph 
(c) or (h) of this section.

(iv)Unpublished abandoned applications (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, a U.S. patent application 
publication, or an international patent application publication 
of an international application that was published in 
accordance with PCT Article 21(2). An application is considered 
to have been identified in a document, such as a patent, when the 
application number or serial number and filing date, first named 
inventor, title and filing date or other application specific 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 the patent 
and is not included in the printed patent. Also, the file contents 
may be made available to the public, upon a written request, if 
benefit of the abandoned application is claimed under 35 U.S.C. 
119(e), 120, 121, or 365 in an application that has issued as a U.S. 
patent, or has published as a statutory invention registration, a 
U.S. patent application publication, or an international patent 
application that was published in accordance with PCT Article 
21(2). A copy of the application-as-filed, the file contents of the 
application, or a specific document in the file of the application 
may be provided to any person upon written request, and payment 
of the appropriate fee (§ 1.19(b)).

(v)Unpublished pending applications (including provisional 
applications) whose benefit is claimed. A copy of the file 
contents 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 benefit of the application is claimed 
under 35 U.S.C. 119(e), 120, 121, or 365 in an application that has 
issued as a U.S. patent, an application that has published as a statutory 
invention registration, a U.S. patent application publication, 
or an international patent application publication that was published 
in accordance with PCT Article 21(2). A copy of the application-
as-filed, or a specific document in the file of the pending 
application may also be provided to any person upon written 
request, and payment of the appropriate fee (§ 1.19(b)). The 
Office will not provide access to the paper file of a pending application, 
except as provided in paragraph (c) or (h) of this section.

(vi)Unpublished pending applications (including provisional 
applications) that are incorporated by reference or otherwise 
identified. A copy of the application as originally 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, or an international 
patent application publication that was published in accordance 
with PCT Article 21(2). The Office will not provide access to the 
paper file of a pending application, except as provided in paragraph 
(c) or (h) of this section.

(vii)When a petition for access or a power to inspect is 
required. Applications that were not published or patented, that 
are not the subject of a benefit claim under 35 U.S.C. 119(e), 120, 
121, or 365 in an application that has issued as a U.S. patent, an 
application that has published as a statutory invention registration, 
a U.S. patent application publication, or an international patent 
application publication that was published in accordance with 
PCT Article 21(2), or are not identified in a U.S. patent, a statutory 
invention registration, a U.S. patent application publication, 
or an international patent application that was published in accordance 
with PCT Article 21(2), are not available to the public. If an 
application is identified in the file contents of another application, 
but not the published patent application or patent itself, a granted 
petition for access (see paragraph (h)) or a power to inspect (see 
paragraph (c)) is necessary to obtain the application, or a copy of 
the application.

(2) Information concerning a patent application may be 
communicated to the public if the patent application is identified 
in paragraphs (a)(1)(i) through (a)(1)(vi) of this section. The information 
that may be communicated to the public (i.e., status information) 
includes:

(i)Whether the application is pending, abandoned, or 
patented;

(ii)Whether the application has been published under 
35 U.S.C. 122(b);

(iii)The application “numerical identifier” which may 
be: 

(A)The eight-digit application number (the two-
digit series code plus the six-digit serial number); or 

(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 

(iv)Whether another application claims the benefit of 
the application (i.e., whether there are any applications that claim 
the benefit of the filing date under 35 U.S.C. 119(e), 120, 121 or 
365 of the application), and if there are any such applications, the 
numerical identifier of the application, the specified relationship 
between the applications (e.g., continuation), whether the application 
is pending, abandoned or patented, and whether the application 
has been published under 35 U.S.C. 122(b).

Status information of an application means only the 
following information: 

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

(B)whether the application has been published; 

(C)the application number or the serial number 
plus any one of the filing date of the national application, 
the international filing date or the date of entry 
into the national stage; and

(D)whether another application claims the benefit 
of the application (i.e., whether there are any applications 
that claim the benefit of the filing date under 
35 U.S.C. 119(e), 120, 121 or 365 of the application), 
and if there are any such applications, status information 
therefor as set forth in 37 CFR 1.14(a)(2)(iv).

A requester seeking status information regarding 
an 
application should check the Patent Application 
Information Retrieval (PAIR) system on the U.S. 
Patent and Trademark Office (USPTO) website at 
http://www.uspto.gov/ebc. Alternatively, the 
requester may contact the File Information Unit (see 
MPEP § 1730). The File Information Unit (FIU) will 
check the relevant Office records and will inform the 
requester whether the application has been published 
or has issued as a patent. If the application has been 
published, the FIU will inform the requester of the 
publication number and publication date, and if the 
application has issued as a patent, the patent number, 
issue date and classification. If the application has not 
been published, but is pending or abandoned then the 
FIU should determine whether the requester is:

(A)an inventor;

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

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

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

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

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

Furthermore, if the requester is not (A), (B), (C), or 
(D), as set forth above, but the application is a 
national stage application or any application claiming 
the benefit of the filing date of a published international 
application and the United States of America 
has been indicated as a Designated State in the international 
application, pursuant to 37 CFR 
1.14(a)(2)(iv), the requester is entitled to status 
information for the national stage application as well 
as any application claiming the benefit of the filing 
date of the published international application. A copy 
of the first page of the published international application 
or of the corresponding page of the PCT Gazette 
must be supplied with the status request.  The status 
request should be made in writing to the Office of 
PCT Legal Administration (see MPEP §
 
1730). 
Alternatively, inquiries relating to applications claiming 
the benefit of the filing date of a published international 
application may be directed to the PCT Help 
desk. Only the serial number and filing date, or application 
number, as well as whether the application is 
pending, abandoned, or patented may be given for the 
national stage application and for any applications 
claiming the benefit of the filing date of the referenced 
published international application. Other 
information contained on the continuity data
screen, such as whether the application is a CIP, continuation 
or divisional application, the date of abandonment 
of the application and issue date may be 
confidential information and should not be communicated. 

STATUS LOCATION INFORMATION FOR OF- 
FICE PERSONNEL

When it is desired to determine the current location 
or status of an application, Office personnel should 
use PALM. If the application is an Image File Wrapper 
(IFW) application, no location is associated with 
the file. For the location of any artifact file(s) associated 
with an IFW application, see the IFW Manual.

Office personnel requesting status/location information 
on  applications  prior to 07 series applications 
that are not in the PALM system should
contact the FIU (see MPEP § 1730) where the numerical 
index records of the above mentioned applications 
are maintained.

==103 Right of Public To Inspect Patent Files and Some Application Files==

37 CFR 1.11. Files open to the public.

(a)The specification, drawings, and all papers relating to the 
file of: A published application; a patent; or a statutory invention 
registration are open to inspection by the public, and copies may 
be obtained upon the payment of the fee set forth in § 1.19(b)(2). 
If an application was published in redacted form pursuant to § 
1.217, the complete file wrapper and contents of the patent application 
will not be available if: The requirements of paragraphs 
(d)(1), (d)(2), and (d)(3) of § 1.217 have been met in the application; 
and the application is still pending. See § 2.27 of this title for 
trademark files.

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

(c)All requests for reexamination for which all the requirements 
of § 1.510 or § 1.915 have been satisfied will be announced 
in the Official Gazette. Any reexaminations at the initiative of the 
Director pursuant to § 1.520 will also be announced in the Official 
Gazette. The announcement shall include at least the date of the 
request, if any, the reexamination request control number or the 
Director initiated order control number, patent number, title, class 
and subclass, name of the inventor, name of the patent owner of 
record, and the examining group to which the reexamination is 
assigned.

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

(e)Except as prohibited in § 41.6(b), the file of any interference 
is open to public inspection and copies of the file may be 
obtained upon payment of the fee therefor.

37 CFR 1.14. Patent applications preserved in confidence. 

(a)Confidentiality of patent application information. Patent 
applications that have not been published under 35 U.S.C. 122(b)
are generally preserved in confidence pursuant to 35 U.S.C. 
122(a). Information concerning the filing, pendency, or subject 
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.

(1)Records associated with patent applications (see paragraph 
(g) for international applications) may be available in the 
following situations:

(i)Patented applications and statutory invention registrations. 
The file of an application that has issued as a patent or 
published as a statutory invention registration is available to the 
public as set forth in §1.11(a). A copy of the patent application-as-
filed, the file contents of the application, or a specific document in 
the file of such an application may be provided upon request and 
payment of the appropriate fee set forth in § 1.19(b). 

(ii)Published abandoned applications. The file of an 
abandoned application that has been published as a patent applica
tion publication is available to the public 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 person upon request, 
and payment of the appropriate fee set forth in § 1.19(b).

(iii)Published pending applications. A copy of the 
application-as-filed, the file contents of the application, or a specific 
document in the file of a pending application that has been 
published as a patent application publication may be provided to 
any person upon request, and payment of the appropriate fee set 
forth in § 1.19(b). If a redacted copy of the application was used 
for the patent application publication, the copy of the specification, 
drawings, and papers may be limited to a redacted copy. The 
Office will not provide access to the paper file of a pending application 
that has been published, except as provided in paragraph 
(c) or (h) of this section.

(iv)Unpublished abandoned applications (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, a U.S. patent application 
publication, or an international patent application publication 
of an international application that was published in 
accordance with PCT Article 21(2). An application is considered 
to have been identified in a document, such as a patent, when the 
application number or serial number and filing date, first named 
inventor, title and filing date or other application specific 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 the patent 
and is not included in the printed patent. Also, the file contents 
may be made available to the public, upon a written request, if 
benefit of the abandoned application is claimed under 35 U.S.C. 
119(e), 120, 121, or 365 in an application that has issued as a U.S. 
patent, or has published as a statutory invention registration, a 
U.S. patent application publication, or an international patent 
application that was published in accordance with PCT Article 
21(2). A copy of the application-as-filed, the file contents of the 
application, or a specific document in the file of the application 
may be provided to any person upon written request, and payment 
of the appropriate fee (§ 1.19(b)).

(v)Unpublished pending applications (including provisional 
applications) whose benefit is claimed. A copy of the file 
contents 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 benefit of the application is claimed 
under 35 U.S.C. 119(e), 120, 121, or 365 in an application that has 
issued as a U.S. patent, an application that has published as a statutory 
invention registration, a U.S. patent application publication, 
or an international patent application publication that was published 
in accordance with PCT Article 21(2). A copy of the application-
as-filed, or a specific document in the file of the pending 
application may also be provided to any person upon written 
request, and payment of the appropriate fee (§ 1.19(b)). The 
Office will not provide access to the paper file of a pending application, 
except as provided in paragraph (c) or (h) of this section.

(vi)Unpublished pending applications (including provisional 
applications) that are incorporated by reference or otherwise 
identified. A copy of the application as originally 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, or an international patent 
application publication that was published in accordance with 
PCT Article 21(2). The Office will not provide access to the paper 
file of a pending application, except as provided in paragraph (c) 
or (h) of this section.

(vii) When a petition for access or a power to inspect is 
required. Applications that were not published or patented, that 
are not the subject of a benefit claim under 35 U.S.C. 119(e), 120, 
121, or 365 in an application that has issued as a U.S. patent, an 
application that has published as a statutory invention registration, 
a U.S. patent application publication, or an international patent 
application publication that was published in accordance with 
PCT Article 21(2), or are not identified in a U.S. patent, a statutory 
invention registration, a U.S. patent application publication, 
or an international patent application that was published in accordance 
with PCT Article 21(2), are not available to the public. If an 
application is identified in the file contents of another application, 
but not the published patent application or patent itself, a granted 
petition for access (see paragraph (h)) or a power to inspect (see 
paragraph (c)) is necessary to obtain the application, or a copy of 
the application.

(2) Information concerning a patent application may be 
communicated to the public if the patent application is identified 
in paragraphs (a)(1)(i) through (a)(1)(vi) of this section. The information 
that may be communicated to the public (i.e., status information) 
includes:

(i)Whether the application is pending, abandoned, or 
patented;

(ii)Whether the application has been published under 
35 U.S.C. 122(b);

(iii)The application “numerical identifier” which may 
be: 

(A)The eight-digit application number (the two-
digit series code plus the six-digit serial number); or 

(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 

(iv)Whether another application claims the benefit of 
the application (i.e., whether there are any applications that claim 
the benefit of the filing date under 35 U.S.C. 119(e), 120, 121 or 
365 of the application), and if there are any such applications, the 
numerical identifier of the application, the specified relationship 
between the applications (e.g., continuation), whether the application 
is pending, abandoned or patented, and whether the application 
has been published under 35 U.S.C. 122(b). 

I.ACCESS TO IMAGE FILE WRAPPER 
(IFW) APPLICATIONS

The USPTO adopted an electronic data processing 
system for the storage and maintenance of all records 
associated with patent applications. All new applications 
filed on or after June 30, 2003 are stored in this 
system as an Image File Wrapper (IFW), and the IFW 
is the official record of the application. Similarly, as 
earlier filed pending applications are loaded into the 
IFW system, the electronic record will be the official 
record of the application. There is no corresponding 
paper file wrapper for IFW applications. When access 
to IFW applications is available to the public in the 
File Information Unit (FIU) and/or over the Internet, 
the public will be able to access pending and abandoned 
published patent applications pursuant to 
37 CFR 1.14(a)(1)(ii) and (iii). If an application is an 
IFW application and FIU/Internet access is not yet 
available for IFW applications, then the file itself will 
not be available to the public for inspection. However, 
copies of the application file may be obtained pursuant 
to 37 CFR 1.14(a)(1)(ii) and (iii).

II.PUBLISHED U.S. PATENT APPLICATIONS

37 CFR 1.14. Patent applications preserved in confidence.

(a)Confidentiality of patent application information. Patent 
applications that have not been published under 35 U.S.C. 122(b)
are generally preserved in confidence pursuant to 35 U.S.C. 
122(a). Information concerning the filing, pendency, or subject 
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.

(1)Records associated with patent applications (see paragraph 
(g) for international applications) may be available in the 
following situations:

(ii)Published abandoned applications. The file of an 
abandoned application that has been published as a patent application 
publication is available to the public 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 person upon request, 
and payment of the appropriate fee set forth in § 1.19(b).

(iii)Published pending applications. A copy of the application-
as-filed, the file contents of the application, or a specific 
document in the file of a pending application that has been published 
as a patent application publication may be provided to any 
person upon request, and payment of the appropriate fee set forth 
in § 1.19(b). If a redacted copy of the application was used for the 
patent application publication, the copy of the specification, drawings, 
and papers may be limited to a redacted copy. The Office 
will not provide access to the paper file of a pending application 
that has been published, except as provided in paragraph (c) or 
(h) of this section.

If a patent application has been published pursuant 
to 35 U.S.C. 122(b), then a copy of the specification, 
drawings, and all papers relating to the file of that 
published application (whether abandoned or pending) 
may be provided to any person upon written 
request and payment of the fee set forth in 37 CFR 
1.19(b). See 37 CFR 1.14(a)(1)(ii) and (iii). If a 
redacted copy of the application was used for the 
patent application publication, the copy of the application 
will be limited to the redacted copy of the 
application and the redacted materials provided under 
37 CFR 1.217(d). 

See paragraph I., above, for information pertaining 
to access to Image File Wrapper (IFW) applications. 
Published applications maintained in the IFW system 
are available on the USPTO’s Internet website in 
the public Patent Application Information Retrieval 
(PAIR) system. If the published patent application is 
pending and it is not maintained in the IFW system, 
the paper application file itself will not be available 
to the public for inspection. Only copies of the application 
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 
public for inspection and obtaining copies. See 
37 
CFR 1.11(a). 

III.UNPUBLISHED ABANDONED AND 
PENDING APPLICATIONS (INCLUDING 
PROVISIONAL APPLICATIONS) THAT 
ARE IDENTIFIED

37 CFR 1.14. Patent applications preserved in confidence.

(a)Confidentiality of patent application information. Patent 
applications that have not been published under 35 U.S.C. 122(b)
are generally preserved in confidence pursuant to 35 U.S.C. 
122(a). Information concerning the filing, pendency, or subject 
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.

(1)Records associated with patent applications (see paragraph 
(g) for international applications) may be available in the 
following situations:

(iv)Unpublished abandoned applications (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, a U.S. patent application 
publication, or an international patent application publication of 
an international application that was published in accordance with 
PCT Article 21(2). An application is considered to have been 
identified in a document, such as a patent, when the application 
number or serial number and filing date, first named inventor, title 
and filing date or other application specific 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 the patent and is not 
included in the printed patent. Also, the file contents may be made 
available to the public, upon a written request, if benefit of the 
abandoned application is claimed under 35 U.S.C. 119(e), 120, 
121, or 365 in an application that has issued as a U.S. patent, or 
has published as a statutory invention registration, a U.S. patent 
application publication, or an international patent application that 
was published in accordance with PCT Article 21(2). A copy of 
the application-as-filed, the file contents of the application, or a 
specific document in the file of the application may be provided to 
any person upon written request, and payment of the appropriate 
fee (§ 1.19(b)).

(vi)Unpublished pending applications (including provisional 
applications) that are incorporated by reference or otherwise 
identified. A copy of the application as originally 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, or an international patent 
application publication that was published in accordance with 
PCT Article 21(2). The Office will not provide access to the paper 
file of a pending application, except as provided in paragraph (c) 
or (h) of this section.

Abandoned applications meeting the requirements 
of 37 CFR 1.14(a)(1)(iv) and any application that is 
open to the public under 37 
CFR 1.11 may be 
obtained by any person upon written request to the 
FIU without the specific written authority of the 
applicant, assignee, attorney or agent of record or 
Director. The following abandoned applications are 
available from the FIU: (A) An abandoned application 
referred to in a U.S. patent application publication or 
U.S. patent; and (B) a pending File Wrapper Continuation 
application (FWC) filed under former 37 CFR 
1.62 of an abandoned application that meets the 
requirements of 37 CFR 1.14(a)(1)(iv). Under former 
37 CFR 1.62(f), where access is permitted to an application 
within the file wrapper of a FWC application, 
the applicant has waived the right to keep all earlier 
filed applications in the same file wrapper in confidence.

37 CFR 1.14(a)(1)(i) relates only to United States 
applications that are open to public inspection. See 
37 CFR 1.14(g)(3)-(5) for access to international 
applications where the U.S. is designated. See also 
MPEP § 110. If an abandoned application is referred 
to in an international application that is published in 
accordance with PCT Article 21(2), access to the 
abandoned application is available under 37 CFR 
1.14(a)(1)(iv). 

An abandoned non-IFW application identified in a 
U.S. patent application publication, U.S. patent or a 
U.S. application that is open to public inspection may 
be ordered for inspection by any member of the public 
through the FIU. An abandoned file received by a 
member of the public must be returned to the charge 
counter in the FIU before closing the same day it is 
received. If the abandoned application 
is contained 
within a pending FWC application, the requester will 
generally be directed to the appropriate Technology 
Center (TC) to inquire as to the availability of the 
pending FWC application. If the pending FWC application 
is available, it will be forwarded to the FIU for 
the requester to pick-up. See paragraph I., above, for 
information pertaining to access to IFW applications.

The incorporation by reference of a pending application 
in a U.S. patent application publication, a 
U.S.
 
patent, a published international application 
published in accordance with PCT Article 21(2), or a 
statutory invention registration constitutes a special 
circumstance under 35 U.S.C. 122 warranting that a 
copy of the application-as-filed be provided upon 
written request as provided in 37 CFR 1.14(a)(1)(iv). 
In addition, if a U.S. patent application publication, a 
U.S. patent, or a published international application 
claims benefit under 35 U.S.C. 119(e), 120, 121, or 
365 to a U.S. patent application, a copy of that application-
as-filed may be provided upon written request, 
or available through the public PAIR system if the 
application is maintained in the IFW system. A benefit 
claim in an international application that does not 
designate the United States is not a claim under 35 
U.S.C. 119(e), 120, 121 or 365. The written request, 
including a copy of the page of the patent application 
publication, U.S. patent, or published international 
application including the incorporation by reference 
or specific reference under 35 U.S.C. 119(e), 120, 

121, or 365, and the requisite fee set forth in 37 CFR 
1.19(b)(1), should be directed to the Certification 
Division. However, an incorporation by reference that 
is made as part of a transmittal letter for the application, 
or that is a part of the text of the application that 
has been canceled and which does not appear as part 
of the printed patent, may not be relied upon to obtain 
a copy of the application as originally filed. A petition 
for access with an explanation of special circumstances 
other than the not-printed incorporation by 
reference will be required. See 37 CFR 
1.14(a)(1)(vii).

Copies of a patent application-as-filed and the contents 
of a patent application file wrapper may be 
ordered from the Certification Division with a facsimile 
request and payment of the appropriate fee 
under 
37 CFR 1.19(b) by USPTO Deposit Account, 
American Express®, Discover®, MasterCard®, or 
Visa® by any person having a right to access to the 
originally filed application or patent. The Office does 
not provide for access to non-United States applications.

Form PTO/SB/68 may be used to request access.

Request For Access To An Abandoned Application Under 37 CFR 1.14

IV.ACCESS WHERE PART OF AN 
APPLICATION IS INCORPORATED BY 
REFERENCE IN A U.S. PATENT 
APPLICATION PUBLICATION OR A U.S. 
PATENT

37 CFR 1.14(a)(1)(vi) permits a member of the 
public, without a petition for access, to obtain a copy 
of a pending application as originally filed, when the 
application is incorporated by reference in a U.S. 
patent application publication or a U.S. patent, upon 
the filing of an appropriate request and the payment of 
the required fee. However, if only part of the application 
is incorporated by reference, for example, where 
an application states, “the disclosure of a valve on 
page 5, lines 5-35, of application No. XX/YYY,YYY, 
is hereby incorporated by reference,” then a petition 
for access is required to obtain access to or a copy of 
the incorporated material. Incorporation by reference 
of part of an application in a U.S. patent application 
publication or a U.S. patent constitutes a special circumstances 
under 35 U.S.C. 122(a) warranting that 
access to that part of the original disclosure of the 
application be granted on petition. The incorporation 
by reference will be interpreted as a waiver of confidentiality 
of only that part of the original disclosure as 
filed, and not the entire application file. In re Gallo, 
231 USPQ 496 (Comm’r Pat. 1986). If applicant 
objects to access to the entire application file, applicant 
must file two copies of the information incorporated 
by reference along with the objection. In the 
example given, applicant would be required to provide 
two copies of page 5, lines 5-35 of the XX/
YYY,YYY application. Failure to provide the material 
within the time period provided will result 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 application. Compare In re 
Marsh Eng’g. Co., 1913 C.D. 183 (Comm’r Pat. 
1913).

V. PETITION FOR ACCESS

37 CFR 1.14. Patent applications preserved in confidence.

(a)Confidentiality of patent application information. Patent 
applications that have not been published under 35 U.S.C. 122(b)
are generally preserved in confidence pursuant to 35 U.S.C. 
122(a). Information concerning the filing, pendency, or subject 
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.

(1)Records associated with patent applications (see paragraph 
(g) for international applications) may be available in the 
following situations:


(vii)When a petition for access or a power to inspect is 
required. Applications that were not published or patented, that 
are not the subject of a benefit claim under 35 U.S.C. 119(e), 120, 
121, or 365 in an application that has issued as a U.S. patent, an 
application that has published as a statutory invention registration, 
a U.S. patent application publication, or an international patent 
application publication that was published in accordance with 
PCT Article 21(2), or are not identified in a U.S. patent, a statutory 
invention registration, a U.S. patent application publication, 
or an international patent application that was published in accordance 
with PCT Article 21(2), are not available to the public. If an 
application is identified in the file contents of another application, 
but not the published patent application or patent itself, a granted 
petition for access (see paragraph (h)) or a power to inspect (see 
paragraph (c)) is necessary to obtain the application, or a copy of 
the application.

(h)Access or copies in other circumstances. The Office, 
either sua sponte or on petition, may also provide access or copies 
of all or part of an application if necessary to carry out an Act of 
Congress or if warranted by other special circumstances. Any 
petition by a member of the public seeking access to, or copies of, 
all or part of any pending or abandoned application preserved in 
confidence pursuant to paragraph (a) of this section, or any related 
papers, must include:

(1)The fee set forth in § 1.17(g); and

(2)A showing that access to the application is necessary 
to carry out an Act of Congress or that special circumstances exist 
which warrant petitioner being granted access to all or part of the 
application.

Any interested party may file a petition, accompanied 
by the petition fee, to the Director for access to 
an application. Inasmuch as the post office address is 
necessary for the complete identification of the petitioner, 
it should always be included complete with 
ZIP Code number. In addition, telephone and facsimile 
numbers should be provided to expedite handling 
of the petition. Petitions for access are handled in the 
Office of Patent Legal Administration, unless the 
application is involved in an interference. See MPEP 
§ 1002.02(b).

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

VI.ACCESS WHERE PATENT CLAIMS 
35 U.S.C. 119(e) 120, 121, or 365 BENEFIT

37 CFR 1.14. Patent applications preserved in confidence.

(a)Confidentiality of patent application information. Patent 
applications that have not been published under 35 U.S.C. 122(b)
are generally preserved in confidence pursuant to 35 U.S.C. 
122(a). Information concerning the filing, pendency, or subject 
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.

(1)Records associated with patent applications (see paragraph 
(g) for international applications) may be available in the 
following situations:

(iv)Unpublished abandoned applications (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, a U.S. patent application 
publication, or an international patent application publication of 
an international application that was published in accordance with 
PCT Article 21(2). An application is considered to have been 
identified in a document, such as a patent, when the application 
number or serial number and filing date, first named inventor, title 
and filing date or other application specific 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 the patent and is not 
included in the printed patent. Also, the file contents may be made 
available to the public, upon a written request, if benefit of the 
abandoned application is claimed under 35 U.S.C. 119(e), 120, 
121, or 365 in an application that has issued as a U.S. patent, or 
has published as a statutory invention registration, a U.S. patent 
application publication, or an international patent application that 
was published in accordance with PCT Article 21(2). A copy of 
the application-as-filed, the file contents of the application, or a 
specific document in the file of the application may be provided to 
any person upon written request, and payment of the appropriate 
fee (§ 1.19(b)).

(v)Unpublished pending applications (including provisional 
applications) whose benefit is claimed. A copy of the file 
contents 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 benefit of the application is claimed 
under 35 U.S.C. 119(e), 120, 121, or 365 in an application that has 
issued as a U.S. patent, an application that has published as a statutory 
invention registration, a U.S. patent application publication, 
or an international patent application publication that was published 
in accordance with PCT Article 21(2). A copy of the application-
as-filed, or a specific document in the file of the pending 
application may also be provided to any person upon written 
request, and payment of the appropriate fee (§ 1.19(b)). The 
Office will not provide access to the paper file of a pending application, 
except as provided in paragraph (c) or (h) of this section.

(vi)Unpublished pending applications (including provisional 
applications) that are incorporated by reference or otherwise 
identified. A copy of the application as originally 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, or an international patent 
application publication that was published in accordance with 
PCT Article 21(2). The Office will not provide access to the paper 
file of a pending application, except as provided in paragraph (c) 
or (h) of this section.

Whenever a patent relies on the filing date of an 
earlier but still pending application, the Office permits 
an applicant to obtain a copy of the prior application, 
either as originally filed or of the pending file history, 
upon written request (to the Office of Public Records) 
and payment of the appropriate fee. Furthermore, after 
publication of an international application that was 
published in accordance with PCT Article 21(2), a 
U.S. patent, a U.S. patent application publication, or a 
statutory invention registration, the file contents of 
any abandoned application identified or relied upon in 
such a publication are available pursuant to 37 CFR 
1.14(a)(1)(iv). If the application is pending and benefit 
of the application is claimed pursuant to 35 U.S.C. 
119(e), 120, 121 or 365 in such a patent document, 
then the file contents of the application are available 
pursuant to 37 CFR 1.14(a)(1)(v). Such a patent 
application is available through the public PAIR system 
if the application is maintained in the IFW system.

VII.ACCESS TO PROVISIONAL APPLICATIONS

In provisional applications, access or certified copies 
will only be given to parties with written authority 
from a named inventor, the assignee of record, or the 
attorney or agent of record. Since provisional applications 
do not require an oath or declaration, there may 
be no power of attorney in the application. If there is 
no power of attorney in the provisional application, a 
certified copy requested by the registered attorney or 
agent named in the papers accompanying the provisional 
application papers will be supplied to the correspondence 
address of the provisional application. 
Provisional applications are also available in the same 
manner as any other application. For example, an 
application that is relied upon for priority in a U.S. 
patent and is abandoned is available under 37 CFR 
1.14(a)(1)(iv) and, as a result may be available 
through public PAIR.

VIII.APPLICATION AT BOARD OF PATENT 
APPEALS AND INTERFERENCES

The Board of Patent Appeals and Interferences handles 
all requests for access to applications 
involved in an interference. See 37 CFR 41.109.

IX.DEFENSIVE PUBLICATIONS

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

X.REISSUE APPLICATIONS

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

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

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

(A)The filing of reissue applications will be 
announced in the Official Gazette (except for continued 
prosecution applications filed under 37 CFR 
1.53(d)) and will include certain identifying data as 
specified in 37 CFR 1.11(b). Any member of the general 
public may request access to a particular reissue 
application filed after March 1, 1977. 

(B)Following the announcement in the Official 
Gazette, the pending reissue application files (other 
than those that are maintained in the IFW system)
will be maintained in the TCs and inspection thereof 
will be supervised by TC personnel. Although no general 
limit is placed on the amount of time spent 
reviewing the files, the Office may impose limita
tions, if necessary. No access will be permitted while 
the application is actively being processed.

(C)Where the reissue application (other than 
those that are maintained in the IFW system) has left 
the TC for administrative processing, requests for 
access should be directed to the appropriate supervisory 
personnel in the division or branch where the 
application is currently located.

(D)The reissue application file is not available to 
the public once the reissue application file has been 
released and forwarded by the TC for publication of 
the reissue patent, except if the reissue application 
file is maintained in the IFW system then the reissue 
application file would be available through the public 
PAIR system. This would include any reissue application 
files which have been selected for a post-allowance 
screening in the Office of Patent Legal 
Administration. Unless prosecution is reopened pursuant 
to the screening, the reissue application files are 
not available to the public until the reissue patent 
issues. This is because the reissue application file is 
put into a special format for printing purposes upon 
forwarding the application file for publication, and its 
release to the public would constitute a disruption of 
the publication process.

(E)Requests for copies of papers in the reissue 
application file must be in writing addressed to Mail 
Stop Document Services, Director of the United 
States Patent and Trademark Office, P.O. Box 1450, 
Alexandria, Virginia 22313-1450 and may be either 
mailed or delivered to the Customer Service Window. 
The price for a copy of an application as filed is set 
forth in 37 CFR 1.19(b)(1). Since no useful purpose is 
seen for retaining such written request for copies of 
papers in reissue applications, they should be 
destroyed after the order has been completed.

XI.REQUEST FOR REEXAMINATION

An announcement of the filing of each request for 
reexamination in which the entire fee has been paid, 
and of each reexamination ordered at the initiative of 
the Director under 37 CFR 1.520, will be published in 
the Official Gazette. A reexamination file is normally 
NOT open to inspection by the general public until 
the file has been scanned into the reexamination database 
in the Central Reexamination Unit (CRU), at 
which point an electronic copy of the file is made 
available to the public. A Reexamination Processing 
System (REPS) terminal is available to the public in 
the Patent Search Room for accessing/copying reexamination 
files from the reexamination database. 
Access is free, and copies are 25 cents per page. All 
reexamination files are available to the public in electronic 
format only. See also MPEP § 2232.

XII.DECISIONS BY THE DIRECTOR 

37 CFR 1.14. Patent applications preserved in confidence.

(e)Decisions by the Director. Any decision by the Director 
that would not otherwise be open to public inspection may be published 
or made available for public inspection if:

(1)The Director believes the decision involves an interpretation 
of patent laws or regulations that would be of precedential 
value; and

(2)The applicant is given notice and an opportunity to 
object in writing within two months on the ground that the decision 
discloses a trade secret or other confidential information. 
Any objection must identify the deletions in the text of the decision 
considered necessary to protect the information, or explain 
why the entire decision must be withheld from the public to protect 
such information. An applicant or party will be given time, 
not less than twenty days, to request reconsideration and seek 
court review before any portions of a decision are made public 
under this paragraph over his or her objection

37 CFR 41.6. Public availability of Board records.

(a)Publication. (1) Generally. Any Board action is available 
for public inspection without a party’s permission if rendered in a 
file open to the public pursuant to § 1.11 of this title or in an application 
that has been published in accordance with §§ 1.211 to1.221 of this title. The Office may independently publish any 
Board action that is available for public inspection.

(2)Determination of special circumstances. Any Board 
action not publishable under paragraph (a)(1) of this section may 
be published or made available for public inspection if the Director 
believes that special circumstances warrant publication and a 
party does not, within two months after being notified of the 
intention to make the action public, object in writing on the 
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 
discloses such information, the party shall identify the deletions in 
the text of the action considered necessary to protect the information. 
If the affected party considers that the entire action must be 
withheld from the public to protect such information, the party 
must explain why. The party will be given time, not less than 
twenty days, to request reconsideration and seek court review 
before any contested portion of the action is made public over its 
objection.

(b)Record of proceeding. (1) The record of a Board proceeding 
is available to the public unless a patent application not 
otherwise available to the public is involved.

(2)Notwithstanding paragraph (b)(1) of this section, after 
a final Board action in or judgment in a Board proceeding, 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 published 
under §§ 1.211 to 1.221 of this title.

37 CFR 1.14(e) states the conditions under which 
significant decisions by the Director that would 
not otherwise be open to public inspection will be 
made available to the public. 37 CFR 41.6describes the procedure for making a decision of the 
Board of Patent Appeals and Interferences available 
to the public. These sections are applicable to 
decisions deemed by the Director to involve an interpretation 
of patent laws or regulation that would be of 
significant precedent value, where such decisions are 
contained in either pending or abandoned applications 
or in interference files not otherwise open to the public. 
It is applicable whether or not the decision is a 
final decision of the U.S. Patent and Trademark 
Office.

37 CFR 1.14(e) and 37 CFR 41.6 are considered 
to place a duty on the U.S. Patent and Trademark 
Office to identify significant decisions and to take the 
steps necessary to inform the public of such decisions, 
by publication of such decisions, in whole or in part. 
It is anticipated, however, that no more than a few 
dozen decisions per year will be deemed of sufficient 
importance to warrant publication under the authority 
of this section.

XIII.FOIA REQUESTS

37 CFR 102.4. Requirements for making requests.

(a)A request for USPTO records that are not customarily 
made available to the public as part of USPTO’s regular informational 
services must be in 
writing, and shall be processed under 
FOIA, regardless of whether FOIA is mentioned in the request. 
Requests should be sent to the USPTO FOIA Officer, United 
States Patent and Trademark Office, P.O. Box 
1450, Alexandria, 
Virginia 22313-1450 (records FOIA requires to be made regularly 
available for public inspection and copying are addressed in 
§ 102.2(c)). For the quickest handling, the request letter and envelope 
should be marked “Freedom of Information Act Request.” 
For requests for records about oneself, § 102.24 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 death certificate 
or an obituary) facilitates processing the request.

(b)The records requested must be described in enough detail 
to enable USPTO personnel to locate them with a reasonable 
amount of effort. Whenever possible, a request should include 
specific information about each record sought, such as the date, 
title or name, author, recipient, and subject matter of the record, 
and the name and location of the office where the record is 
located. Also, if records about a court case are sought, the title of 
the case, the court in which the case was filed, and the nature of 
the case should be included. If known, any file designations or 
descriptions for the requested records should be included. In general, 
the more specifically the request describes the records 
sought, the greater the likelihood that USPTO will locate those 
records. If the FOIA Officer determines that a 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 also may give 
the requester an opportunity to discuss the request so that it may 
be modified to meet the requirements of this section.

Many decisions of the Office are available on the 
FOIA section of the U.S. Patent and Trademark 
Office website at www.uspto.gov/web/offices/com/
sol/foia/index.html. See 37 CFR Part 102, Subpart A, 
“Freedom of Information Act,” for rules pertaining to 
FOIA requests.

==104 Power to Inspect Application==

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 
application file is available, and the application contains written 
authority (e.g., a power to inspect) granting access to such person. 
The written authority must be signed by:

(1)An applicant; 

(2)An attorney or agent of record; 

(3)An authorized official of an assignee of record (made 
of record pursuant to § 3.71 of this chapter); or 

(4)A registered attorney or agent named in the papers 
accompanying the application papers filed under § 1.53 or the 
national stage documents filed under § 1.495, if an executed oath 
or declaration pursuant to § 1.63 or § 1.497 has not been filed. 

If an executed oath or declaration pursuant to 
37 CFR 1.63 or 1.497 has been filed, no person but 
the applicant (any one of joint applicants), an attorney 
or agent of record (if a power of attorney was filed), 
or an assignee whose assignment is of record, will be 
permitted to have access to the file of any pending 
application kept in confidence under 35 U.S.C. 
122(a), except as provided for under 37 
CFR 1.11or 1.14, former 37 CFR 1.62(f), or under the interference 
rules, unless written authority from one of the 
above indicated parties, identifying the application to 
be inspected and the name of the person authorized to 
have access, is made of record, or upon the written 
order of the Director, which will also become a part of 
the record of the application.

A person acting in a representative capacity under 
37 CFR 1.34 may execute a power to inspect an 
application only if the attorney or agent was named in 
the application transmittal papers filed under 37 CFR 
1.53 or the national stage documents filed under 
37 CFR 1.495 and an executed oath or declaration has 
not been filed. Once an executed oath or declaration 
has been filed, any previously filed power to inspect 
signed by an registered attorney or agent who does 
not have a power of attorney will cease to have effect. 
For a discussion of power of attorney in an application, 
see MPEP § 402.

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

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

Powers to inspect are not accepted in Image File 
Wrapper (IFW) applications. IFW applications are 
available through the Private Patent Application 
Information Retrieval (PAIR) system, and pro seapplicants and attorneys of record have direct access 
to the IFW through Private PAIR (when a Customer 
Number is associated with the correspondence 
address for the application, and the applicant or attorney 
has access to Private PAIR for the customer number). 
In addition, IFW application files of 
published applications or patents are available at 
least through Public PAIR. If for some reason an 
applicant, assignee, or attorney or agent of record cannot 
view an IFW application through PAIR, then a 
copy of the application must be purchased from the 
Office of Public Records.

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

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

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

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

ACCESS TO PATENT APPLICATIONS (PRO- 
VISIONAL AND NONPROVISIONAL) AND 
INTERFERENCE FILES

In order to ensure that access to patent applications, 
other than applications that are available pursuant to 
37 CFR 1.11 or 1.14, and interference files is given 
only to persons who are entitled thereto or who are 
specially authorized to have access under 37 CFR 
1.11, 1.14 and 41.6 and to ensure also that the 
file record identifies any such specially authorized 
person who has been given access to a file, the following 
practice will be observed by all personnel of the 
U.S. Patent and Trademark Office:

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

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

(C)Unregistered employees of attorneys or 
agents, public stenographers, and all other persons not 
within the provisions of paragraphs (A) and (B) above 
will be given access only upon presentation of a written 
authorization for access (power to inspect) signed 
by a person specified in paragraph (A) above, which 
authorization will be entered as a part of the official 
file. The power to inspect must specifically name the 
person who is entitled to inspect and copy the application. 
An associate or representative of the named person 
is not entitled to access to the application on 
behalf of the authorized person. Further, the power to 
inspect must specifically identify the application by 
application number and be limited to a single application. 
Form PTO/SB/67 may be used for this purpose.

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

==105 Suspended or Excluded Practitioner Cannot Inspect==

U.S. Patent and Trademark Office (USPTO) 
employees are forbidden to hold either oral or written 
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 the applicant. Power 
to inspect given to such an attorney or agent will not 
be accepted.

==106 Control of Inspection by Assignee==

The assignee of record of the entire interest in an 
application may intervene in the prosecution of the 
application, appointing an attorney or agent of his or 
her own choice. See 37 CFR 3.71. Such intervention, 
however, does not exclude the applicant from access 
to the application to see that it is being prosecuted 
properly, unless the assignee makes specific request to 
that effect. Any request to prevent the inventor from 
obtaining access to the file should be filed as a separate 
paper, 37 CFR 1.4(c), and should be directed to 
the Office of Petitions. If the request is granted, the 
inventor will be informed that he or she will only be 
permitted to inspect the application on sufficient 
showing why such inspection is necessary to conserve 
his or her rights, In re The Kellogg Switchboard & 
Supply Company, 1906 C.D. 274 (Comm’r Pat. 
1906). Of course, after the application has published 
pursuant to 35 U.S.C. 122(b), the application 
will be available to the public and any restriction on 
the inventor to access his or her application previously 
granted will no longer be in effect. 

===106.01 Rights of Assignee of Part Interest===

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

==110 Confidential Nature of International Applications==

PCT Article 30.

Confidential Nature of the International Application.

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

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

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

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

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

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

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

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

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

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

PCT Article 38.

Confidential Nature of the International Preliminary 
Examination.

(1)Neither the International Bureau nor the International 
Preliminary Examining Authority shall, unless requested or authorized 
by the applicant, allow access within the meaning, and 
with 
the proviso, of Article 30(4) to the file of the international 
preliminary examination by any person or authority at any time, 
except by the elected Offices once the international preliminary 
examination report has been established.

(2)Subject to the provisions of paragraph (1) and Articles 
36(1) and (3) and 37(3)(b), neither the International Bureau nor 
the International Preliminary Examining Authority shall, unless 
requested or authorized by the applicant, give information on the 
issuance or non-issuance of an international preliminary examination 
report and on the withdrawal or non-withdrawal of the 
demand or of any election.

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

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

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

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

Although most international applications are published 
soon after the expiration of 18 months from the 
priority date, PCT Article 21(2)(a), such publication 
does not open up the Home Copy or Search Copy to 
the public for inspection, except as provided in 
37 
CFR 1.14(g).

37 CFR 1.14. Patent applications preserved in confidence.

(g)International applications.

(1)Copies of international application files for 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. was designated, and 
upon payment of the appropriate fee (see § 1.19(b)), if:

(i)With respect to the Home Copy (the copy of the 
international application kept by the Office in its capacity as the 
Receiving Office, see PCT Article 12(1)), the international application 
was filed with the U.S. Receiving Office;

(ii)With respect to the Search Copy (the copy of an 
international application kept by the Office in its capacity as the 
International Searching Authority, see PCT Article 12(1)), the 
U.S. acted as the International Searching Authority, except for the 
written opinion of the International Searching Authority which 
shall not be available until the expiration of thirty months from the 
priority date; or

(iii)With respect to the Examination Copy (the copy of 
an international application kept by the Office in its capacity as 
the International Preliminary Examining Authority), the United 
States acted as the International Preliminary Examining Authority, 
an International Preliminary Examination Report has issued, and 
the United States was elected. 

(2)A copy of an English language translation of a publication 
of an international application which has been filed in the 
United States Patent and Trademark Office pursuant to 35 U.S.C. 
154(d)(4) will be furnished upon written request including a 
showing that the publication of the application in accordance with 
PCT Article 21(2) has occurred and that the U.S. was designated, 
and upon payment of the appropriate fee (§ 1.19(b)(4)).

(3)Access to international application files for 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 permitted in accordance 
with PCT Articles 30 and 38 and PCT Rules 44ter.1, 94.2and 94.3, upon written request including a showing that the publi
cation of the application has occurred and that the U.S. was designated. 

(4)In accordance with PCT Article 30, copies of an international 
application-as-filed under paragraph (a) of this section 
will not be provided prior to the international publication of the 
application pursuant to PCT Article 21(2).

(5)Access to international application files under paragraphs 
(a)(1)(i) through (a)(1)(vi) and (g)(3) of this section will 
not be permitted with respect to the Examination Copy in accordance 
with PCT Article 38.

Effective July 30, 2003, 37 CFR 1.14(g)
was amended to provide greater access to international 
application files kept by the U.S. Patent and 
Trademark Office (USPTO). 37 CFR 1.14(g) as 
amended applies to international applications having 
an international filing date on or after November 29, 
2000.  After publication of an application under 
35 U.S.C. 122(b), the USPTO will make available 
copies of the application files and also allow for 
access to those files in accordance with 37 CFR 
1.14(a). Therefore, after publication of an international 
application designating the U.S. under PCT 
Article 21, the USPTO will make available copies of, 
and allow access to, those international application 
files which are kept in the USPTO (see 37 CFR 
1.14(g)).

37 CFR 1.14(g)(1) sets forth those conditions 
upon which copies of international application files 
may be provided to the public. 37 CFR 
1.14(g)(1)(i) and (ii) address the situation where 
the U.S. acted as the receiving Office and the International 
Searching Authority, respectively. Under these 
provisions, copies of the Home and Search Copies of 
the international file will be provided upon request. 
However, the written opinion established by 
the 
International Searching Authority will not be 
available until the expiration of 30 months from the 
priority date. 37 CFR 1.14(g)(1)(iii) addresses 
the situation in which the U.S. acted as the International 
Preliminary Examining Authority (IPEA), the 
U.S. was elected, and the international preliminary 
examination report (IPER) has issued. PCT Rule 94.2provides that after issuance of the IPER, the IPEA 
shall provide copies of any documents in the examination 
file to the elected Offices upon request. PCT 
Rule 94.3 permits the elected Offices to provide 
access to any documents in its files after international 
publication has occurred. Therefore, the USPTO acting 
in its capacity as an elected Office, will provide a 
copy of the examination file in an international application 
to a third party upon submission of a request 
complying with the requirements of 37 CFR 
1.14(g)(1)(iii). Requests for copies of an international 
application file under 37 CFR CFR 
1.14(g)(1) must be in the form of a written request 
sent to the Office of PCT Legal Administration and 
must include a showing that the international application 
has been published and that the U.S. was designated. 
Such a showing should 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 accompanied by the appropriate fee 
(37 
CFR 1.19(b)).

37 CFR 1.14(g)(2) provides that copies of 
English language translations of international applications, 
which were published in a non-English language 
and which designated the U.S., and which have 
been submitted to the Office pursuant to 35 U.S.C. 
154(d)(4), will also be available to the public. The 
USPTO will not provide general notification to the 
public of the filing of English language translations 
under 35 
U.S.C. 154. Under 35 U.S.C. 154, it is the 
responsibility of the applicant to notify any possible 
infringers for the purposes of obtaining provisional 
rights.

37 CFR 1.14(g)(3) addresses access to the 
Home Copy and the Search Copy of the international 
application. Access to the Examination Copy of the 
international application is prohibited under 37 CFR 
1.14(g)(5) as required by PCT Article 38. 

==115 Review of Applications for National Security and Property Rights Issues==

All provisional applications filed under 35 U.S.C. 
111(b), nonprovisional applications filed under 
35 U.S.C. 111(a), and international applications filed 
under the PCT, in the U.S. Patent and Trademark 
Office (USPTO) are reviewed for the purposes of 
issuance of a foreign filing license pursuant to 
35 U.S.C. 184. See also 37 CFR 5.1(b). These applications 
are screened upon receipt in the USPTO for 
subject matter that, if disclosed, might impact the 
national security. Such applications are referred to the 
appropriate agencies for consideration of restrictions 
on disclosure of the subject matter. Authority for this 
referral can be found in 35 U.S.C. 181 which provides, 
in part:

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

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

For those applications in which the Government 
has a property interest (including applications indicating 
national security classified subject matter), 
responsibility for notifying the Commissioner for Patents 
of the need for a Secrecy Order resides with the 
agency having that interest. Applications that are 
national security classified (see 37 CFR 1.9(i)) may 
be so indicated by use of authorized national security 
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 compliance 
with 37 CFR 5.1(a) and Executive Order 12958 of 
April 17, 1995 and Executive Order 13292 of March 
25, 2003. As set forth in 37 CFR 5.1(d), the applicant 
in a national security classified patent application 
must obtain a secrecy order from the appropriate 
defense agency or provide authority to 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 applications 
is to identify inventions in which DOE or NASA 
might have property rights. See 42 U.S.C. 2182 and 
42 U.S.C. 2457 and MPEP § 150.

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

Provisional applications filed in a foreign language 
are also screened under these provisions. The 
Office will make an attempt to determine the subject 
matter of the application, but the applicant may be 
required to provide at least an English language 
abstract of the information for screening purposes. It 
is strongly recommended that if the applicant is in 
possession of an English language description of the 
technology, it should be filed with the provisional 
application to prevent screening delays.

All applications should be cleared from secrecy 
review before forwarding to issue. If the L&R code on 
the general information display does not equal 1, then 
an E-mail message should be sent to the supervisor of 
Licensing and Review, or in the case of an IFW application, 
a message should be sent to LREVINCOMINGDOCS. 

Applications will be deleted from IFW upon the 
imposition of a secrecy order.

Patent Application Locating and Monitoring’s 
(PALM’s) general information display discloses the 
current Licensing and Review status as well as the 
historical status. The indicator “L&R code” displays 
the current status of the application while the indicators 
“Third Level Review” and “Secrecy Order” display 
the historical status of the application. An L&R 
code of “3” or a “Third Level Review” of “Yes” indicates 
that application is/has been considered for security 
screening.

A L&R code of “4” indicates that application is 
currently under Secrecy Order. In this case, the application 
has been converted to a paper application file 
and there should be no images maintained in the 
Image File Wrapper system (IFW).

While the initial screening is performed only by 
designated personnel, all examiners have a responsibility 
to be alert for obviously sensitive subject matter 
either in the original disclosure or subsequently introduced, 
for example, by amendment. If the examiner 
is aware of subject matter which should be 
subject to screening by appropriate office personnel, 
this should be brought to the attention of Licensing 
and Review, to any of the supervisory patent examiners 
(SPEs) of Technology Center Working Group 
3640 or 3660.

==120 Secrecy Orders==

37 CFR 5.1. Correspondence.

(a)All correspondence in connection with this part, including 
petitions, should be addressed to: Mail Stop L&R, Commissioner 
for Patents, P.O. Box 1450, Alexandria, Virginia 22313-
1450.

(b)Application as used in this part includes provisional 
applications filed under 35 U.S.C. 111(b) (§ 1.9(a)(2) of this chapter), 
nonprovisional applications filed under 35 U.S.C. 111(a) or 
entering the national stage from an international application after 
compliance with 35 U.S.C. 371 (§ 1.9(a)(3)), or international 
applications filed under the Patent Cooperation Treaty prior to 
entering the national stage of processing (§ 1.9(b)). 

(c)Patent applications and documents relating thereto that 
are national security classified (see § 1.9(i) of this chapter) and 
contain authorized national security markings (e.g., “Confidential,” 
“Secret” or “Top Secret”) are accepted by the Office. 
National security classified documents filed in the Office must be 
either hand-carried to Licensing and Review or mailed to the 
Office in compliance with paragraph (a) of this section. 

(d)The applicant in a national security classified patent 
application must obtain a secrecy order pursuant to § 5.2(a). If a 
national security classified patent application is filed without a 
notification pursuant to § 5.2(a), the Office will set a time period 
within which either the application must be declassified, or the 
application must be placed under a secrecy order pursuant to 
§ 5.2(a), or the applicant must submit evidence of a good faith 
effort to obtain a secrecy order pursuant to § 5.2(a) from the relevant 
department or agency in order to prevent 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 within the time period set by the 
Office, but the application has not been declassified or placed 
under a secrecy order pursuant to § 5.2(a), the Office will again 
set a time period within which either the application must be 
declassified, or the application must be placed under a secrecy 
order pursuant to §
 
5.2(a), or the applicant must submit evidence 
of a good faith effort to again obtain a secrecy order pursuant to 
§ 5.2(a) from the relevant department or agency in order to prevent 
abandonment of the application. 

(e)An application will not be published under § 1.211 of 
this chapter or allowed under § 1.311 of this chapter if publication 
or disclosure of the application would be detrimental to national 
security. An application under national security review will not be 
published at least until six months from its 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 until the application is 
declassified and any secrecy order under § 5.2(a) has been 
rescinded. 

(f)Applications on inventions made outside the United 
States and on inventions in which a U.S. Government defense 
agency has a property interest will not be made available to 
defense agencies. 

37 CFR 5.2. Secrecy order.

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

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

(c)An application disclosing any significant part of the subject 
matter of an application under a secrecy order pursuant to 
paragraph (a) of this section also falls within the scope of such 
secrecy order. Any such application that is pending before the 
Office must be promptly brought to the attention of Licensing and 
Review, unless such application is itself under a secrecy order pursuant 
to paragraph (a) of this section. Any subsequently filed 
application containing any significant part of the subject matter of 
an application under a secrecy order pursuant to paragraph (a) of 
this section must either be hand-carried to Licensing and Review 
or mailed to the Office in compliance with § 5.1(a).

37 CFR 5.3. Prosecution of application under secrecy 
orders; withholding patent.

Unless specifically ordered otherwise, action on the application 
by the Office and prosecution by the applicant will proceed 
during the time an application is under secrecy order to the point 
indicated in this section:

(a)National applications under secrecy order which come to 
a final rejection must be appealed or otherwise prosecuted to 
avoid abandonment. Appeals in such cases must be completed by 
the applicant but unless otherwise specifically ordered by the 
Commissioner for Patents will not be set for hearing until the 
secrecy order is removed.

(b)An interference will not be declared involving a national 
application under secrecy order. An applicant whose application is 
under secrecy order may suggest an interference (§ 41.202(a) of 
this title), but the Office will not act on the request while the application 
remains under a secrecy order.

(c)When the national application is found to be in condition 
for allowance except for the secrecy order the applicant and the 
agency which caused the secrecy order to be issued will be notified. 
This notice (which is not a notice of allowance under §
 
1.311of this chapter) does not require reply by the applicant and places 
the national application in a condition of suspension until the 
secrecy order is removed. When the secrecy order is removed the 
Patent and Trademark Office will issue a notice of allowance 
under §
 
1.311 of this chapter, or take such other action as may 
then be warranted.

(d)International applications under secrecy order will not be 
mailed, delivered, or otherwise transmitted to the international 
authorities or the applicant. International applications under 
secrecy order will be processed up to the point where, if it were 
not for the secrecy order, record and search copies would be transmitted 
to the international authorities or the applicant.

37 CFR 5.4. Petition for rescission of secrecy order.

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

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

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

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

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

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

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

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

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

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

I.SECRECY ORDER TYPES

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

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

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

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

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

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

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

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

II.RELATED SUBJECT MATTER

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

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

III.CORRESPONDENCE

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

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

When applicants desire to change the Power of 
Attorney in an application under Secrecy Order, 
applicant is required to provide a statement that 
the new attorney(s) has been apprised of the secrecy 
order. 

In the case of applications bearing National Security 
Classification markings pursuant to an Executive 
Order, e.g., “Confidential” or “Secret,” applicants 
must provide a DoD cage code as evidence of the 
ability to accept and store classified information. 
Applicants no longer need to provide individual personal 
information to ensure a proper security clearance. 
Personnel controlling the cleared 
correspondence address bear the burden of ensuring 
that individuals obtaining classified information from 
the correspondence address follow the proper procedures 
for handling classified information.

IV.PCT APPLICATIONS

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

V.CHANGES IN SECRECY ORDERS

Applicants may petition for rescission or modification 
of the Secrecy Order. For example, if the applicant 
believes that certain existing facts or 
circumstances would render the Secrecy Order ineffectual, 
he or she may informally contact the sponsoring 
agency to discuss these facts or formally petition 
the Commissioner for Patents to rescind the Order. 
Rescission of a Secrecy Order may also be effected 
in some circumstances by expunging the sensitive 
subject matter from the disclosure, provided the sensitive 
subject matter is not necessary for an enabling 
disclosure under 35 U.S.C. 112, first paragraph. See 
MPEP § 724.05. The defense agency identified with 
the Secrecy Order as sponsoring the Order should be 
contacted directly for assistance in determining what 
subject matter in the application is sensitive, and 
whether the agency would agree to rescind the Order 
upon expunging this subject matter. The applicant 
may also petition the Commissioner for Patents for a 
permit to disclose the invention to another or to modify 
the Secrecy Order stating fully the reason or purpose 
for disclosure or modification. An example of 
such a situation would be a request to file the application 
in a foreign country. The requirements for petitions 
are described in 37 CFR 5.4 and 5.5. The law 
also provides that if an appeal is necessary, it may be 
taken to the Secretary of Commerce. Any petition or 
appeal should be addressed to the Mail Stop L&R, 
Commissioner for Patents, P.O. Box 1450, Alexandria, 
Virginia, 22313-1450.

VI.IMPROPER OR INADVERTENT DISCLOSURE

If, prior to or after the issuance of the Secrecy 
Order, any significant part of the subject matter or 
material information relevant to the application has 
been or is revealed to any U.S. citizen in the United 
States, the principals must promptly inform such person 
of the Secrecy Order and the penalties for 
improper disclosure. If such part of the subject matter 
was or is disclosed to any person in a foreign country 
or foreign national in the U.S., the principals must not 
inform such person of the Secrecy Order, but instead 
must promptly furnish to Mail Stop L&R, Commissioner 
for Patents, P.O. Box 1450, Alexandria, Virginia, 
22313-1450 the following information to the 
extent not already furnished: date of disclosure; name 
and address of the disclosee; identification of such 
subject matter; and any authorization by a U.S. government 
agency to export such subject matter. If the 
subject matter is included in any foreign patent application 
or patent, this should be identified.

VII.EXPIRATION

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

The expiration of or failure to renew a Secrecy 
Order does not lessen in any way the responsibility of 
the principals for the security of the subject matter if it 
is subject to the provisions of Exec. Order No. 12958 
or the Atomic Energy Act of 1954, as amended, 
42 U.S.C. 141 et. seq. and 42 U.S.C. 2181 et. seq. or 
other applicable law unless the principals have been 
expressly notified that the subject patent application 
has been declassified by the proper authorities and the 
security markings have been authorized to be canceled 
or removed.

==121 Handling of Applications and Other Papers Bearing Security Markings==

Under Executive Order for Classified National 
Security Information (Exec. Order No. 12958, 60 FR 
19825 (April 20, 1995)) and Executive Order 13292 
of March 25, 2003 standards are prescribed for the 
marking, handling, and care of official information 
which requires safeguarding in the interest of security.

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

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

==130 Examination of Secrecy Order Cases==

All applications in which a Secrecy Order has been 
imposed are examined in Technology Center (TC) 
Working Groups 3640 and 3660. If the 
Order is imposed subsequent to the docketing of an 
application in another TC, the application will be 
transferred to TC Working Group 3640 or 3660.

Secrecy Order cases are examined for patentability 
as in other cases, but may not be passed to issue; nor 
will an interference be declared where one or more of 
the conflicting cases is classified or under Secrecy 
Order. See 37 CFR 5.3 and MPEP § 2306. 

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

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

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

Sometimes applications bearing national security 
markings but no Secrecy Order come up for examination. 
In this case, the examiner should require the 
applicant to seek imposition of a Secrecy Order or 
authority to cancel the markings. This should preferably 
be done with the first action and, in any event, 
prior to final disposition of the application. Pursuant 
to 37 CFR 5.1(d), if no Secrecy Order has issued in a 
national security classified patent application, the 
Office will set a time period within which the applicant 
must take one of the following three actions in 
order to prevent abandonment of the application:

(A)obtain a Secrecy Order;

(B)declassify the application; or

(C)submit evidence of a good faith effort to 
obtain a Secrecy Order pursuant to 37 CFR 5.2(a).

Pursuant to 37 CFR 5.1(e), a national security 
classified patent application will not be allowed until 
the application is declassified and any Secrecy Order 
pursuant to 37 CFR 5.2(a) has been rescinded.

==140 Foreign Filing Licenses==

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

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

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

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

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

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

35 U.S.C. 186. Penalty.

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

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

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

Sec. 9101. INCREASED EFFECTIVENESS OF 
PATENT LAW

(c)REGULATIONS.-- The Commissioner of Patents 
and Trademarks shall prescribe such regulations as may 
be necessary to implement the amendments made by this 
section.

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

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

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

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

(A)under any patent before the court, or

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

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

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

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

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

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

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

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

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

(b)The license from the Commissioner for Patents referred 
to in paragraph (a) would also authorize the export of technical 
data abroad for purposes relating to the preparation, filing or possible 
filing and prosecution of a foreign patent application without 
separately complying with the regulations contained in 22 CFR 
parts 121 through 130 (International Traffic in Arms Regulations 
of the Department of State), 15 CFR parts 730-774 (Regulations 
of the Bureau of Industry and Security, Department of Commerce) 
and 10 CFR part 810 (Foreign Atomic Energy Programs of the 
Department of Energy).

(c)Where technical data in the form of a patent application, 
or in any form, are being exported for purposes related to the 
preparation, filing or possible filing and prosecution of a foreign 
patent application, without the license from the Commissioner for 
Patents referred to in paragraphs (a) or (b) of this section, or on an 
invention not made in the United States, the export regulations 
contained in 22 CFR parts 120 through 130 (International Traffic 
in Arms Regulations of the Department of State), 15 CFR parts 
730-774 (Bureau of Industry and Security Regulations, Department 
of Commerce) and 10 CFR part 810 (Assistance to Foreign 
Atomic Energy Activities Regulations of the Department of 
Energy) must be complied with unless a license is not required 
because a United States application was on file at the time of 
export for at least six months without a secrecy order under § 5.2 
being placed thereon. The term “exported” means export as it is 
defined in 22 CFR part 120, 15 CFR part 734 and activities covered 
by 10 CFR part 810.

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

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

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

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

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

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

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

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

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

37 CFR 5.12. Petition for license.

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

(b)A petition for license must include the fee set forth in § 
1.17(g) of this chapter, the petitioner’s address, and full instructions 
for delivery of the requested license when it is to be delivered 
to other than the petitioner. The petition should be presented 
in letter form.

37 CFR 5.13. Petition for license; no corresponding 
application.

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

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

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

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

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

37 CFR 5.15. Scope of license.

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

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

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

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

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

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

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

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

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

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

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

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

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


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

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

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

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

37 CFR 5.19. Export of technical data.

(a)Under regulations (15 CFR 734.3(b)(1)(v)) established 
by the Department of Commerce, a license is not required in any 
case to file a patent application or part thereof in a foreign country 
if the foreign filing is in accordance with the regulations (§§ 5.11through 5.25) of the U.S. Patent and Trademark Office.

(b)An export license is not required for data contained in a 
patent application prepared wholly from foreign-origin technical 
data where such application is being sent to the foreign inventor to 
be executed and returned to the United States for subsequent filing 
in the U.S. Patent and Trademark Office (15 CFR 734.10(a)).

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

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

37 CFR 5.25. Petition for retroactive license.

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

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

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

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

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

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

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

(4)The required fee (§ 1.17(g) of this chapter).

In the interests of national security, the United 
States government imposes restrictions on the export 
of technical information. These restrictions are 
administered by the Departments of Commerce, State, 
and/or Energy depending on the subject matter 
involved. For the filing of patent applications in foreign 
countries, the authority for export control has 
been delegated to the Commissioner for Patents (note 
that the term “Commissioner of Patents” is used in 
Chapter 17 of title 35 of the U.S. Code, but “Commissioner 
for Patents” is used in the remainder of the statute 
and in title 37 of the Code of Federal Regulations; 
both titles are understood to represent the same individual). 
Note that the export of subject matter abroad 
for purposes not related to foreign filing of a patent 
application, such as preparing an application in a foreign 
country for subsequent filing in the USPTO is not 
covered by any license from the USPTO. Applicants 
are directed to the Bureau of Industry of Security at 
the Department of Commerce for the appropriate 
clearances.

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

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

I.EXPEDITED FOREIGN FILING LICENSE

Explicit petitions for foreign filing licenses will 
also be accepted in accordance with 37 CFR 5.12(b), 
and may be faxed to Licensing and Review. See 
MPEP § 502.01. Applicants may be interested in such 
petitions in cases: 

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

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

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

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

(E)in which expedited handling is requested. 

The scope of any license granted on these petitions 
is indicated on the license.

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

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

Generally, a license will be granted, if there is no 
national security concern, within 3 business days from 
receipt of the expedited petition (filed under 37 CFR 
5.12(b)) in Licensing and Review. Applicants are 
strongly encouraged to hand deliver or fax the license 
request directly to Licensing and Review at 571-273-
0185. Applicants should also provide a contact number 
or fax number to which the license should be sent. 
Without this information, the license will be mailed to 
the requester, thereby delaying the receipt of the 
license.

II.RETROACTIVE LICENSES

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

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

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

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

==150 Statements to DOE and NASA==

37 CFR 1.14. Patent applications preserved in confidence.

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

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

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

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

(c) Patent application. No patent may be issued to any 
applicant other than the Administrator for any invention 
which appears to the Under Secretary of Commerce for 
Intellectual Property and Director of the United States 
Patent and Trademark Office (hereafter in this section 
referred to as the “Director”) to have significant utility in 
the conduct of aeronautical and space activities unless the 
applicant files with the Director, with the application or 
within thirty days after request therefor by the Director, a 
written statement executed under oath setting forth the 
full facts concerning the circumstances under which such 
invention was made and stating the relationship (if any) of 
such invention to the performance of any work under any 
contract of the Administration. Copies of each statement 
and application to which it relates shall be transmitted 
forthwith by the Director to the Administrator.

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

Shortly after filing, an informal request for a property 
rights statement will be mailed to those applicants 
whose nonprovisional applications have been 
marked by the USPTO security screeners as being of 
interest to DOE or NASA. Provisional applications 
are not subject to DOE or NASA property rights 
review. While no formal time period is set, a response 
by applicants within 45 days will expedite processing. 
If the statement submitted during this period is defective, 
another letter is sent from Licensing and Review 
detailing the deficiencies and giving applicant another 
opportunity to respond during this period of informal 
correspondence.

If no response to the initial so called 45-Day Letter 
is received or if repeated efforts to correct a defective 
statement evidence an absence of cooperation on the 
part of the applicant, a formal request for a statement 
in accordance with the statutes will be made. A 30-
day statutory period for response is then set. There is 
no provision for an extension of this time period. If no 
proper and timely statement is received, the application 
will be held abandoned and the applicant so notified. 
Such applications may be revived under the 
provisions of  37 CFR 1.137. In re Rutan,
231 
USPQ 864 (Comm’r Pat. 1986).

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

==151 Content of the Statements==

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

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

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

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

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

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

{{MPEP Chapter||200}}