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115 Review of Applications for National Security and Property Rights Issues [R-2] - 100 Secrecy, Access, National Security, and Foreign Filing
115 Review of Applications for National Security and Property Rights Issues [R-2]
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.
Applications on inventions made outside the U.S. and on inventions in which a U.S. Government defense agency has a property interest will not be made available to defense agencies (see 37 CFR 5.1(f)). While 35 U.S.C. 181 does not expressly limit security review to applications made in the U.S., the licensing requirement of 35 U.S.C. 184, which limits the need for a license only to inventions made in this country, has been interpreted to limit review under 35 U.S.C. 181 to inventions made in the U.S.
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 or provide authority to cancel the markings.
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.
Some applications have a label (Form PTO-1305) on the upper right hand corner of the face of the file wrapper. A Notice of Allowance and **>Fee(s)< Due may not be mailed for those applications if the "REV" on the label is circled (although the examiner may be given credit for a disposal). Such cases must be forwarded to Licensing and Review to have the security review completed before the Notice of Allowance can be mailed. Cases in which only "DOE" and/or "NASA" is circled should be counted for allowance and the notice of allowance mailed before being sent to Licensing and Review for processing under the Atomic Energy and Space Acts. >For Image File Wrapper (IFW) processing, see the IFW Manual.
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.<
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. Applications that may disclose sensitive subject matter must be forwarded to Licensing & Review with the significant subject matter identified by a check mark in the margin of the paper or by some equivalent marking.
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