Review of Applications for National Security and Property Rights Issues

35 U.S.C. 181

Secrecy of certain inventions and withholding of patent.

Whenever publication or disclosure by the publication of an

application or by the grant of a patent on an invention in which the Government has a

property interest might, in the opinion of the head of the interested Government agency,

be detrimental to the national security, the Commissioner of Patents upon being so

notified shall order that the invention be kept secret and shall withhold the

publication of an application or the grant of a patent therefor under the conditions set

forth hereinafter.

*****

All provisional applications filed under

35 U.S.C. 111(b)

, nonprovisional

applications filed under

35 U.S.C. 111(a)

, international applications filed under the PCT,

and international design applications filed under the Hague Agreement, 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 as provided for in

35 U.S.C.

181

.

If a defense 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

ds 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 13526

of December 29, 2009. However, the Office will accept such applications filed with the

USPTO via the Department of Defense Secret Internet Protocol Router Network (SIPRNET) and

consider them as filed via the USPTO patent electronic filing system for purposes of

37 CFR

1.16(t)

and

37 CFR 1.445(a)(ii)

. 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, with an exception

for provisional applications, is to identify inventions in which DOE or NASA might have

property rights. See 42 U.S.C. 2182, 51 U.S.C. 20135, 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

ith an exception

for provisional applications, is to identify inventions in which DOE or NASA might have

property rights. See 42 U.S.C. 2182, 51 U.S.C. 20135, 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 are required to be cleared from secrecy review before

forwarding to issue. If the L&R code on the general information display does not equal

1, then in an IFW application, a message should be sent to LREVINCOMINGDOCS.

The Patent Data Portal (PDP) System's general information display discloses

the current Licensing and Review 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 Secrecy 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

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.

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