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)

Definitions.

(1) Application as used in this part includes

provisional applications (§

1.9(a)(2)

of this

chapter), nonprovisional applications (§

1.9(a)(3)

), international applications (§

1.9(b)

), or international design applications (§

1.9(n)

).

(2) Foreign application as used in this part

includes, for filing in a foreign country or in a foreign or international

intellectual property authority (other than the United States Patent and

Trademark Office acting as a Receiving Office for international applications

(

35

U.S.C. 361

,

37 CFR 1.412

) or as an

office of indirect filing for international design applications

(

35 U.S.C. 382

,

37 CFR 1.1002

)) any of

the following: An application for patent, international application,

international design application, or application for the registration of a

utility model, industrial design, or model.

(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.

s 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.

uant 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.

on 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.

n 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 or derivation will not be instituted 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 §

1.311

of this chapter) does

not require reply by the applicant and places the national application in a

condition of suspension until the secrecy order is removed. When the secrecy order

is removed the Patent and Trademark Office will issue a notice of allowance under

§

1.311

of this chapter, or take such other action as may

then be warranted.

(d) International applications and international design 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.

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.

te 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.

tus 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

(Type I secrecy order)— to be used for those patent applications that disclose

critical technology with military or space application in accordance with DoD

Directive 5230.25 “Withholding of Unclassified Technical Data From Public

Disclosure,” based on 10 U.S.C. 130 “Authority to Withhold From Public Disclosure

Certain Technical Data.”

(B) Secrecy Order and Permit for Disclosing Classified Information

(Type II secrecy order)— to be used for those patent applications which contain

data that is properly classified or classifiable 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 National

Industrial Security Program Operating Manual (NISPOM)

applications which contain

data that is properly classified or classifiable 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 National

Industrial Security Program Operating Manual (NISPOM).

(C) General Secrecy Order (Type III secrecy order)— to be used for

those patent applications that contain data deemed detrimental to national

security if published or disclosed, including that 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 Type I 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

also 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, Republic of Korea, 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

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 Type II Secrecy Order is to treat classified and

classifiable 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 Type III 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

e 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

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.

INTERNATIONAL APPLICATIONS (PCT) AND INTERNATIONAL DESIGN APPLICATIONS

If the Secrecy Order is applied to an international application or an

international design application, the application will not be mailed, delivered, or

otherwise transmitted to the international authorities or the applicant as long as the

Secrecy Order remains in effect.

An international application will be considered withdrawn

(abandoned) if the Secrecy Order remains in effect at the end of the time limit under

PCT Rule

22.3

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, they may informally contact

the sponsoring agency to discuss these facts or formally petition the Commissioner for

Patents to rescind the Order

ior 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, they 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

. 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

lexandria, 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.

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