100

OCR transcription for search; preserved printed pages are authoritative

# Chapter 100 Secrecy and Access

101

General

102
Information as to Status of an Application
103
Right of Public to Inspect Patent Files and
Some Application Files

104
Power to Inspect Application

105

Disbarred Attorney Cannot Inspect

106
Control of Inspection by Assignee

106.01
01 Rights of Assignee of Part Interest

107
"Secrecy Order" Cases

107.01
"Review" of Applications for Secrecy Order

107.02 Prosecution of "Secrecy Order" Cases

108
Applications relating to Atomic Energy

109
Security Markings

## 101 General [R-48]

35 U.S.C. 122. Confidential status of applications.
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 any Act of Congress or in such special
circumstances as may be determined by the Commis-
sioner.

18 U.S.C. 2071. Concealment, removal, or mutilation
generally. (a) Whoever willfully and unlawfully con-
ceals, 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 not more than
$2,000 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 not more than $2,000 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.

Extract from 37 CFR 1.14 (Rule 14). Patent appli-
cations preserved in secrecy. (a) Except as provided
in section 1.11 (b) pending patent applications are pre-
served in secrecy. No information will be given by the
Office respecting the filing by any particular person of
an application for a patent, the pendency of any par-
tienlar case before it, or the subject matter of any
particular application, nor will access be given to or
copies furnished of any pending application or papers
relating thereto, without written authority in that par-

ticular application from the applicant or his assignee
or attorney or agent of record, unless it shall be neces-
sary to the proper conduct of business before the Office
or as provided by these rules.

All Patent and Trademark Office employees
are legally obligated to preserve pending appli-
cations for patents in confidence. 35 U.S.C. 122
and 18 U.S.C. 2071 impose statutory require-
ments which cover the handling of patent ap-
plications and related documents. Suspension,
removal, and even criminal penalties may be
imposed for violations of these statutes.

In order to provide prompt and orderly serv-
ice to the public, application files must be read-
ily available to authorized Patent and Trade-
mark Office employees at all times. Accordingly.
in carrying or transporting applications and
related papers, care must be exercised by Patent
and Trademark Office employees, especially in
corridors and elevators, to insure that applica-
tions and related papers are always under em-
ployee surveillance and control. Application
files must not be displayed or handled so as to
permit perusal or inspection by any unauthor-
ized 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 Patent and Trademark Office, except for
handling as required by the issue process, unless
specifically authorized by the Commissioner. If
such authorization is given, the employee hav-
ing custody will be responsible for maintaining
confidentiality and otherwise conforming with
the requirements of law.

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

Whenever an application is removed from the
operating area having custody of the file, a
charge card with appropriate notations must be
properly and promptly filed.

Papers arriving within the groups must be
properly and promptly placed within the appro-
priate files. If papers are received with faulty
identification, this should be corrected at once.
If papers are received at a destination for which

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they are not intended due to faulty identifica-
tion or routing, appropriate corrective action
should be taken at once to insure the prompt
receipt thereof at the intended destination. See
§§ 508.01 and 508.03.

All Patent and Trademark Office employees
should bear in mind at all times the critical im-
portance of insuring the confidentiality and
accessibility of patent application files and re-
lated documents, and in addition to the specific
procedures referred to above, should take all
appropriate action to that end.

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 disclosure of the filing date or se-
rial number of any application filed by another
party. This applies not only to Office actions
but also to notes (usually in pencil) in the
file wrapper.

Several lithographic firms in the Washing-
ton, D.C. area file bonds each year with the
Patent and Trademark Office for the privilege
of temporarily withdrawing certain drawings
from the Office in order that drawings may be
prepared for foreign filing.

Patent and Trademark Office employees are
authorized to release drawings to representa-
tives of these firms provided they : (1) Have an
unexpired identification card, (2) Present an
order signed by a party of record in the appli-
cation, and (3) Leave a receipt which can be
filed as a charge card.

Normally, drawings will be returned within
three days. Any drawings which have not been
returned within five days or which are returned
in damaged condition should be reported imme-
diately to the Office of Public Services (Ext.
73236).

## 102 Information as to Status of an Application [R-48]

Status information of an application means
only the following information :

1\. that the application is abandoned, or

2\. that the application is pending, or

3\. that the application has issued as a patent
and the patent number, issue date and classifica-
tion of such patent.

### PATENTED

If an application on which status information
is requested has matured into a patent, the fact
that the application is patented and the patent
number, issue date and classification relative to
the application may be given to anyone.

PENDING OR ABANDONED, NO REFERENCE

If an application is in pending or abandoned
status and has not been referred to by number
and date in a United States or foreign patent or
printed application, status information indicat-
ing only that the application is pending or aban-
doned may be given only to Patent and Trade-
mark Office employees and parties of record
such as:

(a) The applicant.

(b) The attorney or agent of record in the
application.

(c) The assignee of record in the Patent and
Trademark Office.

(d) Anyone who has and furnishes written
authority from a, b, or c.

## REFERENCED APPLICATION

If an application has been referred to by
number and date in a United States or foreign
patent or printed application, status informa-
tion may be given to Patent and Trademark
Office employees and to anyone who furnishes
the Patent and Trademark Office with a writ-
ten request citing the application in question by
serial number and date of filing. The source
document (a United States or foreign patent or
printed application) must be identified in the
written request by the country, number and
date of such patent or application.

## REFERENCED APPLICATION, SOURCE DOCUMENT NOT PRESENTED

If a written request for status information is
presented without a copy of the source docu-
ment, Patent and Trademark Office employees
will check to see that the source document and
the application in question are properly iden-
tified and that the source document refers to the
application in question before supplying the
status information. Requests for information
not accompanied with a copy of the source docu-
ment may require the Office to obtain a copy of
the source document for verification before
status information can be supplied. This may
result in some delay before the desired status
information can be forwarded to the requester.

REFERENCED APPLICATION, SOURCE .
DOCUMENT PRESENTED

If a copy of the source document is presented,
the Office will verify that the United States ap-
plication in question is cited therein. After
checking, status information may be immedi-
ately given and the source document copy may
be returned to the requester. In either case, at
the time the status information is supplied, the
person supplying the status information marks
the request "Information furnished", the date

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and his name. The request is then placed in the
file wrapper or forwarded to the appropriate
area (group art unit, abandoned files, etc.) for
inclusion in the file wrapper as part of the
official record of the application. The applicant
is not consulted. See § 203.08.

## STATUS/LOCATION INFORMATION FOR OFFICE PERSONNEL

When it is desired to determine the current
location or status of an application, office per-
sonnel may contact the Application Division by
phone at extension 71625 or 71626. In a con-
tinuous effort to provide better service, the pre-
vious limitation of requesting the status of no
more than three serial numbers per call has been
discontinued and the information receptionist
will comply with all reasonable requests for
status without regard to number.

However, the information receptionist may
not be able to comply with such requests while
the caller "holds", but may inform him that the
call will be returned, depending upon the num-
ber of information receptionists available at the
time to service other incoming calls and visitors.

Office personnel may also avail themselves of
a "walk-in service" in Bldg. 2 Room 4C20 and
personally search the PALM lists to determine
location and status or may send a numerical
listing to the Application Division, Bldg. 2
Room 4C20, and the Division personnel will
search the records and mail the completed list-
ing to the Group indicated or call the requestor
to advise that the list has been completed,
whichever instructed. When such listings are
forwarded for an indication of status and loca-
tion, they should have columnar space for (a)
Location (b) Batch #, (c) Date and (d)
G.A.U. assigned, in addition to being in numer-
ical order according to series. Status requests
for all applications are initially referred to the
Application Division at extension 71625 or
71626. However, inasmuch as all 60 series appli-
cations prior to 714,000 are not currently in the
PALM system, office personnel requesting
status/location information on those applica-
tions determined not to be in the PALM system
will be requested to contact the Record Services
Branch at extension 73181 where the numerical
index records of the above mentioned applica-
tions are maintained.

# 103 Right of Public to Inspect Patent Files and Some Application Files [R-48]

37 CFR 1.11 (Rule 11). Files open to the public.
(a) After a patent has been issued, the specification,
drawings, and all papers relating to the case in the

file of the patent are open to inspection by the general
public, and copies may be furnished upon paying the
fee therefor. The file of any terminated interference
involving a patent, or an application on which a patent
has subsequently issued, is similarly open to public
inspection and procurement of copies. See trademark
rule 2.27 for trademark files.

(b) Applications in which the Office has accepted a
request filed under section 1.139 are open to inspection
by the general public, and copies may be furnished
upon paying the fee therefor.

Whenever a patent relies upon the filing date
of an earlier but still pending application, the
public is entitled to see the portion of the earlier
application that relates to the common subject
matter, and also what prosecution, if any, was
had in the earlier application of subject matter
claimed in the patent. The interested party
may file a petition to the Commissioner for
access to the application. (See § 1002.02(k).)

Inasmuch as the Post Office address is neces-
sary for the complete identification of the peti-
tioner, it should always be included complete
with the ZIP Code number.

The petition may be filed either with proof
of service of a copy upon the applicant, owner
or attorney of record, if known, in the applica-
tion to which access is sought, or may be filed in
duplicate, in which case the duplicate copy is
sent by the associate solicitor to the applicant,
attorney or owner of the application, who is
given a limited period, as a week or ten days,
within which to state any objection he may
have to the granting of the petition. If no
objection is raised, the petition is approved
by the associate solicitor. If there is no
objection the petitioner is permitted to see
the entire parent application. Otherwise, the
petitioner is allowed to order a copy of only
that portion of the parent application that re-
lates to the common subject matter. A separate
petition should be filed for each application to
which access is desired, or sufficient extra copies
provided so there may be one for placement in
each application file, if the petition be granted,
and one for service upon each attorney of rec-

ord, if the applicant has different attorneys in
his applications. Each petition should show
not only why access is desired, but also why
petitioner believes he is entitled to access.

The patent interference examiner handles
all petitions for access to applications involved
in an interference or having an interference
background.

If a defensive publication, an abstract or an
abbreviature has been published, the entire ap-
plication is available to the public for inspection
and obtaining copies, see § 711.06.

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Extract from 37 CFR 1.14. (b) Except as provided
in section 1.11 (b) abandoned applications are likewise
not open to public inspection, except that if an applica-
tion referred to in a United States patent is abandoned
and is available, it may be inspected or copies obtained
by any person on written request, without notice to the
applicant. Abandoned applications may be destroyed
after twenty years from their filing date, except those
to which particular attention has been called and which
have been marked for preservation. Abandoned appli-
cations will not be returned.

(d) Selected decisions of the Board of Appeals, or
of the Commissioner, in abandoned applications not
otherwise open to public inspection (paragraph (b) of
this section) may be published or made available for
publication at the Commissioner's discretion, unless
the applicant timely presents sufficient reasons for not
doing so. The applicant will be notified, through the at-
torney of record in the application file, when it is pro-
posed to release such a decision and a time not less than
thirty days set for presenting any such reasons. The
fact that the subject matter of the application has not
been made public in any manner, or that the same sub-
ject matter is being prosecuted in a pending appli-
cation, will be considered sufficient reason for not re-
leasing the decision if the applicant so requests unless
the text of the decision contains no description of such
subject matter. Other reasons presented will be duly
considered.

See section 2.27 for trademark applications.

Access to abandoned patent applications
forming a part of a streamlined continuation
application is governed by 37 CFR 1.14(b) and
requires a written request. However, such access
must be limited to those papers which were part
of the abandoned application.

37 CFR 1.14(d) authorizes publication of
decisions of the Board of Appeals or of the
Commissioner, in abandoned applications,
under certain conditions.

37 CFR 1.15. Requests for identifiable records. (a)
Requests for records not disclosed to the public as part
of the regular informational activity of the Patent and
Trademark Office and which are not otherwise dealt
with in these rules may be made by completing Form
CD-244, "Application to Inspect Department Records,"
and submitting this form, in person or by mail, to the
Commissioner of Patents and Trademarks, Washing-
ton, D.C. 20231. A non-refundable application fee of
$2.00 must accompany each application. Copies of Form
CD-244 are available in the Central Reference and
Records Inspection Facility, Room 2122, Department
of Commerce Building, Washington, D.C. 20230, the
search room of the Patent Reference Branch of the
Patent and Trademark Office, the search room of the
Trademark Examining Operation, and in many public
information offices and field offices of the Department
of Commerce. If the requested record is identifiable,
the request will be reviewed by the appropriate official
authorized to make an initial determination of the

availability of the record. If it is determined that the
material is not to be made available to the requesting
person, said person shall be notified in writing of that
fact and the reasons why the record will not be dis-
closed. If the record is to be made available, inspection
will be permitted in the appropriate Patent and Trade-
mark Office search room. Fees for copies of records and
for searches and related services are payable in accord-
ance with the schedule of fees and charges established
in § 4.8 of Title 15, Code of Federal Regulations.

(b) Any person whose application to inspect a record
has been refused may request a reconsideration of the
initial denial by completing and submitting the appro-
priate section of the Form CD-244. The request for
reconsideration should be made within 30 days of the
date of the original denial. In submitting such request
the party should include any written argument he
desires to support his belief that the record requested
should be made available. No personal appearance,
oral argument, or hearing shall be permitted. The
decision upon such request shall be made by the Com-
missioner of Patents and Trademarks, and shall be
based upon the original request, the denial, and any
written argument submitted by the person seeking
access to the record. The decision upon review shall be
promptly made in writing and communicated to the
person seeking access. If the decision is wholly or
partly in favor of availability, the requested record to
such extent shall be made available for inspection as
described in paragraph (a) of this section. To the ex-
tent that the decision is adverse to the request, the
reasons for the denial shall be stated. A decision upon
review completed as provided herein shall constitute
the final decision and action of the Patent and Trade-
mark Office as to the availability of a requested record,
except as may be required by court proceedings ini-
tiated pursuant to 5 U.S.C. 552 (a) (3). Reconsidera-
tions resulting in final decisions as prescribed herein
shall be indexed and made available in the search room
of the Patent Reference Branch.

(c) Procedures applicable in the event of a subpoena,
order, or other compulsory process or demand of a court
or other authority shall be those set forth in Section 7
of Department Order 64 (32 F.R. 9734, July 4, 1967).

ACCESSIBILITY OF NON-FINAL DISCOVERY OPIN-
IONS AND ORDERS ISSUED BY THE BOARD OF
PATENT INTERFERENCES

A number of inquiries have been received
from the patent bar and other interested per-
sons relating to discovery practice under 37
C.F.R. § 1.287 before the Board of Patent Inter-
ferences. The inquiries indicate a need for mak-
ing available to the public non-final Board opin-
ions, including concurring and dissenting opin-
ions, as well as orders, made in the adjudication
of discovery matters before the Board. While
non-final opinions need not be made available to
the public [5 U.S.C. § 552 (a) (2)], in order to
satisfy the need, copies of non-final opinions is-

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sued by the Board will be kept in a file in the
Service Branch of the Board in the U.S. Patent
and Trademark Office (Crystal Plaza, Building
6, Eleventh Floor, Room 1116, Arlington, Vir-
ginia). Opinions in the file may be reviewed by
the public during normal business hours (8:30
A.M. to 5:00 P.M.). Copies of opinions may be
made by the public on reproducing equipment
in the Service Branch with tokens at a cost of
$0.15 per page or copies may be ordered at a cost
of $0.30 per page [37 C.F.R. 1.21 (b) ].

In view of the provisions of 35 U.S.C. § 122
and 37 C.F.R. § 1.11 (a), a consent will be ob-
tained by the Office from all parties in an inter-
ference before an opinion issued in connection
with the interference is placed in the file if the
interference file is not otherwise available to the
public. Preliminary indications are that the
parties and their counsel generally consent.

In order to obtain optimum dissemination of
the information contained in the file, opinions
placed therein will be indexed according to spe-
cific topics. Copies of the index will be updated
from time to time as the need occurs. Specific
questions relating to the index and file may be
directed to the Patent Interference Examiners.

The initial index is as follows :

## INDEX

1.00
Discovery in general [37 C.F.R. § 1.287]

1.10 Requests and service under § 1.287 (a)

1.20 Requests under § 1.287 (b)

1.30
Motions for additional discovery under
§ 1.287 (c)

1.31
Related to derivation

1.32 Related to abandonment, suppres-
sion, and concealment

1.33 Related to inequitable conduct

1.34 Other

1.40
Motions under § 1.287 (d) (1)

1.50
Action under § 1.287 (d) (2)

1.60
Agreements under § 1.287 (e)

### 104 Power to Inspect Application [R-48]

No person but the applicant (any one of
joint applicants), applicant's legal representa-
tive, the assignee whose assignment is of record,
or the attorney, agent or associate attorney of
record will be permitted to have access to the
file of any pending application, except as pro-
vided for under 37 CFR 1.11 (b) or under the
interference rules, unless written authority
from one of the above indicated parties, iden-
tifying 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 Commissioner, which will also become a
part of the record of the case.

Approval by the primary examiner of a
power to inspect is not required. The clerk of
the group to which the application is assigned
ascertains that the power is properly signed by
one of the above indicated parties, and if ac-
ceptable, enters it into the file. If the power to
inspect is unacceptable, notification of non-entry
is written by the clerk 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 Appeals, and
the Patent Issue Division, the question of per-
mission to inspect is decided by the head of
the branch who, if he approves, indicates the
approval directly on the power.

Power to inspect may be granted when a
duplicate copy of a filed power to inspect is
hand delivered. The copy with indication of
approval is placed in the file.

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

Where an applicant relied upon his applica-
tion as a means to interfere with a competitor's
business or customers, permission to inspect
the application may be given the competitor
by the Commissioner. (Ex Parte Bonnie-B
Co. Inc., 1923 C.D. 42; 313 O.G. 453.)

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

Permission to inspect given by the Commis-
sioner, however, is not of a continuing nature.
since the conditions that justified the permit to
inspect when given may not obtain at a later
date.

# ACCESS TO PATENT APPLICATION AND INTERFERENCE FILES

In order to insure that access to patent ap-
plication and interference files is given only to
persons who are entitled thereto or who are spe-
cially authorized to have access under section
1.14 of the Rules of Practice in Patent Cases.
and to insure also that the file record identifies
any such specially authorized person who has
been given access to a file, the following prac-
tice will be observed by all personnel of the
Patent and Trademark Office :

1\. Access, as provided for in the Rules of
Practice. 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.

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2\. Where a power of attorney or authoriza-
tion of agent was given to a registered firm
prior to July 2, 1971, access will be given upon
oral request as in paragraph 1 above to any
registered member or employee of the firm who
has signatory power for the firm.

3\. Unregistered employees of attorneys or
agents, public stenographers, and all other per-
sons not within the provisions of paragraphs 1
and 2 above will be given access only upon
presentation of a written authorization for ac-
cess signed by a person specified in paragraph 1
above, which authorization will be entered as
a part of the official file.

# 105 Disbarred Attorney Cannot In- spect [48]

Patent and Trademark Office employees are
forbidden to hold either oral or written com-
munication with an attorney who has been sus-
pended or excluded from practice regarding an
application unless it be one in which said attor-
ney is the applicant. Power to inspect given to
such an attorney will not be accepted.

# 106 Control of Inspection by Assignee [R-48]

The assignee of the entire interest in an ap-
plication may intervene in the prosecution of

the case, appointing an attorney of his own
choice. (See 37 CFR 1.32.) 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. Even when such
request is made, the applicant may be permitted
to inspect the case on sufficient showing why
such inspection is necessary to conserve his
rights. In're The Kellogg Switchboard & Sup-
ply Company, 1906 C.D. 274.

# 106.01 Rights of Assignee of Part In- terest

While it is only the assignee of the entire
interest who can intervene in the prosecution
of an application or interference to the exclu-
sion of the applicant, an assignee of a part.
interest or a licensee of exclusive right is
entitled to inspect the application.

# 107 "Secrecy Order" Cases [R-48]

Title 35, United States Code, section 181
provides, in part, that any invention in which
the Government does not have a property in-
terest, and whose publication or disclosure by
the granting of a patent might, in the opinion
of the Commissioner, be detrimental to the na-
tional security, shall be made available to the

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defense agencies. Upon notification by the de-
fense agencies, the Commissioner is directed to
order that such inventions be kept secret and
to withhold the grant of a patent for such pe-
riod as the national interest requires. Where
the Government has a property interest, the
interested Government agency determines
whether to notify the Commissioner to keep the
invention secret.

35 U.S.C. 184, Filing of application in foreign coun-
try. Except when authorized by a license obtained
from the Commissioner 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 applica-
tion 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 pursuant to section 181 of this
title without the concurrence of the head of the depart-
ments 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 inadver-
tently filed abroad and the application does not dis-
close an invention within the scope of section 181 of
this title.

The term "application" when used in this chapter
includes applications and any modifications, amend-
ments, or supplements thereto, or divisions thereof.

Since May 3, 1965, all licenses granted by the
Commissioner of Patents and Trademarks to
ifile patent applications in foreign countries
have been made of record in the application to
which they correspond. The granted request for
a license and the license are given paper num-
bers and endorsed on the file wrapper and on
the Serial Register Card. Requests for licenses
which are not approved are neither recorded
nor placed in the application file wrapper.

# 107.01 "Review" of Applications for Secrecy Order [R-48]

Under 35 U.S.C. 181 the obligation is di-
rectly on the Patent and Trademark Office to
appreciate the possible interest of the defense
agencies in pending applications and to take
steps to make them available to such agencies.

All new applications received in the Patent
and Trademark Office are screened by Group
220 personnel to determine which applications
should be made available for review or treated
under the Atomic Energy and Space Acts for
property interests.

All applications that have been screened by
Group 220 will be stamped "LICENSING &
REVIEW" inside the file wrapper. This

stamp simply indicates that the application has
been initially screened and is not to be con-
sidered as a conclusive indication of the security
status of the application or as an indication that
a license for foreign filing will be granted.

All papers subsequently filed must be in-
spected by the examiner to determine whether
matter of an obvious defense interest which
requires a security review or matters of ob-
vious property right interest under the Atomic
Energy or Space Acts has been introduced
into the application. In such applications for-
warded to the Licensing and Review Section of
Group 220, it is helpful if a check mark is placed
in the margin opposite to the part which is
significant in suggesting security or property
right review.

Applications in Group 220 for the review
thereof by the appropriate defense agency may
be borrowed by the examiner when reached for
action. Allowable applications requiring con-
sideration for processing under Section 152 of
the Atomic Energy Act (42 U.S.C. 2182) and/or
Section 305c of the Space Act (42 U.S.C. 2457c)
are processed to issue, including counting of the
issue, and forwarded through Group 220 to the
Office of Quality Review and Patent Issue Divi-
sion. When the security status of the application
cannot be promptly decided, Group 220 will re-
port the progress that has been made to the
group director. Any action to be taken in the
case, for the purpose of advancing said group
date, must be arranged through the group di-
rector.

# 107.02 Prosecution of "Secrecy Or- der" Cases [R-28]

"Secrecy Order" Cases are examined as in
other cases, but may not be passed for issue;
nor will an interference be declared where one
or more of the conflicting cases is secret. See
§ 1111.04.

In case of a final rejection, while such action
must be properly responded 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 Appeals until
the secrecy order is removed, unless specifically
ordered by the Commissioner.

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.

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108

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## 108 Applications Relating to Atomic Energy [R-48]

\- 37 CFR 1.14 (c) reads as follows:

"Applications for patents which disclose or which
appear to disclose, or which purport to disclose, in-
ventions or discoveries relating to atomic energy are
reported to the Atomic Energy Commission and the
Commission will be given access to such applications,
but such reporting does not constitute a determination
that the subject matter of each application so reported
is in fact useful or an invention or discovery or that
such application in fact discloses subject matter in
categories specified by secs. 151(c) and 151(d) of the
Atomic Energy Act of 1954, 68 Stat. 919; 42 U.S.C.
2181."

The Atomic Energy Act of 1954 requires that
the Commissioner of Patents and Trademarks
shall notify the Atomic Energy Commission
of all applications for patent which, in his
opinion, disclose inventions or discoveries re-
quired to be reported under subsection 151 (c)
(42 U.S.C. 2181c) which reads in part as fol-
lows :

". .. any invention or discovery useful in the pro-
duction or utilization of special nuclear material or
atomic energy. . .. "

The term "atomic energy" is defined as all forms
of energy released in the course of nuclear fission
or nuclear transformation (42 U.S.C. 2014c).

All applications received in the Patent and
Trademark Office are sent to Licensing and Re-
view for screening by Group 220 personnel in
order for the Commissioner to fulfill his re-
sponsibilities under section 151(d)' (42 U.S.C.
2181d ) of the Atomic Energy Act, now adminis-
tered by the Energy Research and Development
Administration. Papers subsequently added
must be inspected promptly by the examiner
when received to determine whether the ap-
plication has been amended to relate to atomic

energy and those so related must be promptly
forwarded to Licensing and Review.

When applications are forwarded to Group
220 for consideration of the above requirements,
it is helpful if a check mark is made in the
margin opposite to the part of the paper which
is significant in suggesting that the application
be reported.

In considering applications under the terms
of 37 CFR 1.14(c), the relation of the subject
matter to national security under § 107.01 is not
a significant factor. EVEN applications using a
well-known radioactive source for any purpose
or which disclose inventions having special rela-
tion to atomic energy MUST BE SUBMIT-
TED TO Group 220. See § 706.03 (b).

### 109 Security Markings [R-48]

Under Executive Order 11,652, 37 Federal
Register, Number 48, pages 5212 et seq., stand-
ards 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 Execu-
tive Order, and showing that such marking is
applied by, or at the direction of, a Govern-
ment Agency, are accepted in patent applica-
tions. All applications or papers in the Patent
and Trademark Office bearing words such as
"Secret." or "Confidential," must be promptly
referred to Group 220 for clarification or secu-
rity treatment. Under no circumstances can any
such appliaction, 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 ex-
plained.

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(1).

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