M.P.E.P. 100 Secrecy, Access, National Security, and Foreign Filing

Question 1

MPEP Chapter 100

Answer 1

Secrecy, Access, National Security and Foreign Filing

Question 2

Just a Key to Access on Exam

Answer 2

Separate and memorize the different exceptions to confidentiality for;
1. Pending Applications
2. Abandoned Applications
3. Files available without exception
4. Rules Covering Published Applications

Question 3

General Rule for Access

Answer 3

Both are maintained in confidence of the Patent Office
1. Unpublished Pending
2. Abandoned Applications

**Where Enforceable Rights Exists Outside the PTO,
Full Access to Files inside the PTO Exists.

Question 4

Who can get access to Unpublished Pending Applications?

Answer 4

Limited to;
1. Applicant,
2. Attorney,
3. Assignee (not licensee),
4. Anyone with writing authorization from one of previous.

Question 5

Who has access to Issued Patent or Published Application?

Answer 5

Anyone can inspect and copy it.

Question 6

Exceptions to Access to Unpublished Pending Applications and Unpublished Abandoned Applications

Answer 6

1. Referred to in the text of an issued U.S. Patent
   OR
2. Claimed for Domestic priority.

Question 7

Access for Reissues and Reexaminations

Answer 7

Reissue and Reexaminations are both open to the public

Question 8

What are two ways that the File Opens to the Public?

Answer 8

1. Early Publication
2. After Reissue of Patent

Question 9

How do you obtain a copy of a Accessible File?

Answer 9

1. Written Request
2. Payment of copies

Question 10

Way to Avoid Publication

Answer 10

Express Abandonment

Question 11

How to Expressly Abandon?

Answer 11

1. File a Petition
2. Needs to be 4 Weeks prior to Publication at the latest.

Question 12

Access to Interference Files

Answer 12

Available If;
1. The interference has been terminated,
AND

2. One of the parties of interference was a Patent
   OR
3. An award for priority has been made.

Question 13

Access to Status (pending, abandoned, published, or issued)

Answer 13

Will Provide if:
1. When access can be obtained (owner, assignee, attorney);
OR
2. When the application is identified by serial number and filing date in a published patent document or a U.S. application open to public;
OR
3. When the application is in the national phase of an international (PCT) application in which the United States has been indicated as a receiving state, i.e., designated in the Request.

Question 14

How to Acquire Access to Status of a Patent Document

Answer 14

1. Written request
   AND
2. Copy of document.

Question 15

Access to Parent Status of CON, CIP, DIV

Answer 15

If CON, CIP, DIV qualifies to have its status disclosed.

Question 16

Who can Access Pending or Abandoned File?

Answer 16

1. Inventors UNLESS barred by Assignee
2. Any inventors named without signature under Rule 1.46 or 1.45. (45 ~ joint inventors, 46 ~ assignee, obligated assignee, or otherwise shows sufficient proprietary interest)
3. Assignee, Partial Assignee, Licensee (Exclusive)
4. The attorney or agent, on anyone with written authorization.
5. ApplicantPower to Inspect is unlimited UNLESS limited.*Need permission for this

Question 17

How long does a granted petition for access last?

Answer 17

For a limited amount of time,

Question 18

How do you access an Abandoned, Unpublished Application?

Answer 18

1. ONLY by written request
   AND
2. MUST Satisfy one of these exceptions:
   - Referred to in a U.S. Patent or published application;
   - Referred to in a U.S. Application open to public inspection;
   OR
   - Referred to in a PCT Published Application which designates the U.S.

Question 19

Access to Unpublished Pending Application File Process

Answer 19

1. Petition must be filed;
2. Petition Fee paid;
3. Petition served or copy supplied to Patent Office;
   AND
4. Establish a “Special Circumstance”**You just get what is filed

Question 20

Access to Unpublished Pending Application File: Special Circumstances

Answer 20

1. When owner is using the patent application to INTERFERE WITH COMPETITOR’S business;
2. When a PATENT RELIES UPON the application for priority;
   OR
3. When the Application is INCORPORATED in its ENTIRETY by REFERENCE into a Patent or Published Application.

Question 21

Adequate Service for Access to Unpublished Pending Application File

Answer 21

Service that allows for protest for limited or no access.

Question 22

When a pending application is incorporated only in part to an issued Patent, can the public access it?

Answer 22

ONLY partial access is available Still needs Notice/Service

Question 23

Access to an Abandoned Application in Rule 1.53(d) CPA file

Answer 23

1. Petition must be filed;
2. Petition Fee paid;
3. Petition served or copy supplied to Patent Office;
   AND
4. Establish a “Special Circumstance”**You just get what is filed

Question 24

Access to Assignment Records

Answer 24

The same rules apply to access to assignment records as apply to the applications assigned.

Question 25

Access: Petition and Fee NOT Required

Answer 25

1. Issued Patents,
2. Reissue,
3. Reexam,
4. Some Interference Files,
5. ALL Published Applications,
6. Abandoned Applications (Except for Special Circumstances),
   AND
7. Unpublished Applications (Except for Special Circumstances).

Question 26

Access: Petition and Fee Required

Answer 26

1. Pending Application Prior to Publication,
2. Application Not Subject to Publication,
3. SOME Interference Files,
4. Special Circumstances in Abandoned Application,
   AND
5. Special Circumstances in Unpublished Application.

Question 27

Access: Exceptions to Confidentiality:
1. Issued Patents,
2. Reissue,
3. Reexam,
4. Some Interference Files
AND
5. All Published Applications

Answer 27

They are All Available.

Question 28

Access: Exception To Confidentiality:
1. Pending Application Prior to Publication
2. Pending Application Not Subject to Publication

Answer 28

Not Available EXCEPT
1. Interference with Business.
2. Patent relies upon application for priority.
3. Application incorporated by reference into a patent or published application.

Question 29

Access: Exception to Confidentiality:
1. Abandoned Applications
2. Unpublished Applications

Answer 29

1. Referred to in Issued Patent or Published Application
2. Referred to in Application open to public inspection
3. Referred to in Published PCT designating U.S.

Question 30

Access: Service NOT Required

Answer 30

1. Issued Patents,
2. Reissue,
3. Reexam,
4. Some Interference Files,
5. ALL Published Applications,
6. Abandoned Applications,
   AND
7. Unpublished Applications.

Question 31

Access: Service Required
1. Pending Application Prior to Publication
2. Pending Application Not Subject to Publication

Answer 31

Yes Except for:
1. Copy of Application “as filed”
2. Patent relies upon application for priority.
3. Application incorporated totally by reference into a patent or published application.

Question 32

Access to Status Given

Answer 32

1. Issued Patents,
2. Reissue,
3. Reexam,
4. Some Interference Files,
5. ALL Published Applications,
6. When Access can be obtained,
7. Identified by a number in a Published Patent document,
   OR
8. National Phase PCT Application where U.S. is indicated as receiving state.

Question 33

Access for Inventors or Assignee W/out Petition

Answer 33

Everything and Anything

Question 34

Secrecy Order

Answer 34

Patent Office can issue an order to keep inventions and applications secret where disclosure or publication would be contrary to the National interest.

Applies to:
1. Original Application
2. Any Continuation
3. Divisionals
4. Subsequent disclosure that is subject to the order.

**Two People at the Pentagon

Question 35

When is a Foreign Filing License required?

Answer 35

1. If the invention is CONCEIVED in the United States,
2. Before an Application covering the invention can be filed in another Country.

Question 36

Three Ways to Acquire a Foreign Filing

Answer 36

1. Passage of Six month following the Filling of a U.S. Application.
2. By being granted specifically on the filing receipt, which also will indicate a date that the license becomes effective
   OR
3. By the granting of a petition asking for one.

**Can be retroactive
***Application has includes Foreign Filing Application so must request to deny the guarantee.

Question 37

When can a foreign filing license be obtained retroactively?

Answer 37

Factual circumstances establish in detail that the illegal foreign filing occurred through ERROR.

Question 38

Who knows of a filed application?

Answer 38

You and or the owner.

Question 39

How are applications maintained?

Answer 39

IN confidence

Question 40

Way to Approach Exam Question

Answer 40

1. Published/Issued?
2. Who can grant?
3. No assignment?

Question 41

When can you get access to assignment records?

Answer 41

Goes with the same access and status of the Patent, UNLESS referred to if at least one of the documents reference a patent.

Question 42

An unpublished abandoned application can be accessed if it is ___________ in an issued U.S. Patent.

Answer 42

Referred to

Question 43

An “as filed” copy of a pending unpublished application can be obtained without service if it is in whole _____________________ an issued patent.

Answer 43

Incorporated by Reference