M.P.E.P. 100 Secrecy, Access, National Security, and Foreign Filing Flashcards
MPEP Chapter 100
Secrecy, Access, National Security and Foreign Filing
Just a Key to Access on Exam
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
General Rule for Access
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 Unpublished Pending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.
Access to Unpublished Pending Applications
Limited to;
1. Applicant,
2. Attorney,
3. Assignee (not licensee),
4. Anyone with writing authorization from one of previous.
Access to Issued Patent or Published Application
Anyone can inspect and copy it.
Exceptions to Access to Unpublished Pending Applications and Unpublished Abandoned Applications
- Referred to in the text of an issued U.S. Patent
OR - Claimed for Domestic priority.
Access for Reissues and Reexaminations
Public
When is the File Open to the Public?
- Early Publication
- After Reissue of Patent
How do you obtain a copy of a Accessible File?
- Written Request
- Payment of copies
Way to Avoid Publication
Express Abandonment
How to Expressly Abandon?
- File a Petition
- Needs to be 4 Weeks prior to Publication at the latest.
Access to Interference Files
Available If;
1. The interference has been terminated,
AND
- One of the parties of interference was a Patent
OR - An award for priority has been made.
Access to Status (pending, abandoned, published, or issued)
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.
How to Acquire Access to Status of a Patent Document
- Written request
AND - Copy of document.
Access to Parent Status of CON, CIP, DIV
If CON, CIP, DIV qualifies to have its status disclosed.
Who can Access Pending or Abandoned File?
- Inventors UNLESS barred by Assignee
- Any inventors named without signature under Rule 1.46 or 1.45.
- Assignee, Partial Assignee, Licensee (Exclusive)
- The attorney or agent, on anyone with written authorization.
- ApplicantPower to Inspect is unlimited UNLESS limited.*Need permission for this
How long does a granted petition for access last?
For a limited amount of time,
Access to Abandoned, Unpublished Applications
- ONLY by written request
AND - 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.
Access to Unpublished Pending Application File Process
- Petition must be filed;
- Petition Fee paid;
- Petition served or copy supplied to Patent Office;
AND - Establish a “Special Circumstance”**You just get what is filed
Access to Unpublished Pending Application File: Special Circumstances
- When owner is using the patent application to INTERFERE WITH COMPETITOR’S business;
- When a PATENT RELIES UPON the application for priority;
OR - When the Application is INCORPORATED in its ENTIRETY by REFERENCE into a Patent or Published Application.
Adequate Service for Access to Unpublished Pending Application File
Service that allows for protest for limited or no access.
What happens when a pending application is incorporated only in part to an issued Patent?
ONLY partial access is available Still needs Notice/Service
Access to an Abandoned Application in Rule 1.53(d) CPA file
- Petition must be filed;
- Petition Fee paid;
- Petition served or copy supplied to Patent Office;
AND - Establish a “Special Circumstance”**You just get what is filed
Access to Assignment Records
The same rules apply to access to assignment records as apply to the applications assigned.
Access: Petition and Fee NOT Required
- Issued Patents,
- Reissue,
- Reexam,
- Some Interference Files,
- ALL Published Applications,
- Abandoned Applications (Except for Special Circumstances),
AND - Unpublished Applications (Except for Special Circumstances).
Access: Petition and Fee Required
- Pending Application Prior to Publication,
- Application Not Subject to Publication,
- SOME Interference Files,
- Special Circumstances in Abandoned Application,
AND - Special Circumstances in Unpublished Application.
Access: Exceptions to Confidentiality:
1. Issued Patents,
2. Reissue,
3. Reexam,
4. Some Interference Files
AND
5. All Published Applications
They are All Available.
Access: Exception To Confidentiality:
1. Pending Application Prior to Publication
2. Pending Application Not Subject to Publication
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.
Access: Exception to Confidentiality:
1. Abandoned Applications
2. Unpublished Applications
- Referred to in Issued Patent or Published Application
- Referred to in Application open to public inspection
- Referred to in Published PCT designating U.S.
Access: Service NOT Required
- Issued Patents,
- Reissue,
- Reexam,
- Some Interference Files,
- ALL Published Applications,
- Abandoned Applications,
AND - Unpublished Applications.
Access: Service Required
1. Pending Application Prior to Publication
2. Pending Application Not Subject to Publication
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.
Access to Status Given
- Issued Patents,
- Reissue,
- Reexam,
- Some Interference Files,
- ALL Published Applications,
- When Access can be obtained,
- Identified by a number in a Published Patent document,
OR - National Phase PCT Application where U.S. is indicated as receiving state.
Access for Inventors or Assignee W/out Petition
Everything and Anything
Secrecy Order
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
When is a Foreign Filing License required?
- If the invention is CONCEIVED in the United States,
- Before an Application covering the invention can be filed in another Country.
Three Ways to Acquire a Foreign Filing
- Passage of Six month following the Filling of a U.S. Application.
- By being granted specifically on the filing receipt, which also will indicate a date that the license becomes effective
OR - 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.
When can a foreign filing license be obtained retroactively?
Factual circumstances establish in detail that the illegal foreign filing occurred through ERROR.
Who knows of a filed application?
You and or the owner.
How are applications maintained?
IN confidence
Way to Approach Exam Question
- Published/Issued?
- Who can grant?
- No assignment?
When can you get access to assignment records?
Goes with the same access and status of the Patent, UNLESS referred to if at least one of the documents reference a patent.
An unpublished abandoned application can be accessed if it is ___________ in an issued U.S. Patent.
Referred to
An “as filed” copy of a pending unpublished application can be obtained without service if it is in whole _____________________ an issued patent.
Incorporated by Reference
