130 Examination of Secrecy Order Cases [R-5]
All applications in which a Secrecy Order has been imposed are examined in Technology Center (TC) Working * > Groups < 3640 and ** > 3660 < . If the Order is imposed subsequent to the docketing of an application in another TC, the application will be transferred to TC Working Group 3640 > or 3660 < .
Secrecy Order cases are examined for patentability as in other cases, but may not be passed to issue; nor will an interference be declared where one or more of the conflicting cases is classified or under Secrecy Order. See > 37 CFR 5.3 and < MPEP § 2306 < . **
In case of a final rejection, while such action must be properly replied 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 Patent Appeals and Interferences until the Secrecy Order is removed, unless specifically ordered by the Commissioner for Patents.
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 Any amendments received thereafter are not entered or responded to until such time as the Secrecy Order is rescinded.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.
Due to the additional administrative burdens associated with handling papers in Secrecy Order cases, the full statutory period for reply will ordinarily be set for all Office actions issued on such cases.
Sometimes applications bearing national security markings but no Secrecy Order come up for examination. In this case, the examiner should require the applicant to seek imposition of a Secrecy Order or authority to cancel the markings. This should preferably be done with the first action and, in any event, prior to final disposition of the application. Pursuant to 37 CFR 5.1(d), if no Secrecy Order has issued in a national security classified patent application, the Office will set a time period within which the applicant must take one of the following three actions in order to prevent abandonment of the application:
- (A) obtain a Secrecy Order;
- (B) declassify the application; or
- (C) submit evidence of a good faith
effort to obtain a Secrecy Order pursuant to 37 CFR 5.2(a).
Pursuant to 37 CFR 5.1(e), a national security classified patent application will not be allowed until the application is declassified and any Secrecy Order pursuant to 37 CFR 5.2(a) has been rescinded.