115 Review of Applications for National Security and Property Rights Issues [R-5]
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.
** > 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. <