115 Review of Applications for National Security and Property Rights Issues [R-07.2022]
35 U.S.C. 181 Secrecy of certain inventions and withholding of patent.
Whenever publication or disclosure by the publication of an application or by the grant of a patent on an invention in which the Government has a property interest might, in the opinion of the head of the interested Government agency, be detrimental to the national security, the Commissioner of Patents upon being so notified shall order that the invention be kept secret and shall withhold the publication of an application or the grant of a patent therefor under the conditions set forth hereinafter.
All provisional applications filed under 35 U.S.C. 111(b), nonprovisional applications filed under 35 U.S.C. 111(a), international applications filed under the PCT, and international design applications filed under the Hague Agreement, 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 as provided for in 35 U.S.C. 181.
If a defense 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 13526 of December 29, 2009. However, the Office will accept such applications filed with the USPTO via the Department of Defense Secret Internet Protocol Router Network (SIPRNET) and consider them as filed via the USPTO patent electronic filing system for purposes of 37 CFR 1.16(t) and 37 CFR 1.445(a)(ii). 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, with an exception for provisional applications, is to identify inventions in which DOE or NASA might have property rights. See 42 U.S.C. 2182, 51 U.S.C. 20135, 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.
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 are required to be cleared from secrecy review before forwarding to issue. If the L&R code on the general information display does not equal 1, then in an IFW application, a message should be sent to LREVINCOMINGDOCS.
The Patent Data Portal (PDP) System’s general information display discloses the current Licensing and Review 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 Secrecy 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.