Secrecy, Access, National Security, and Foreign Filing

Applications Are Confidential — 35 USC 122(a) Unpublished applications are confidential. Access allowed only under specific exceptions in 37 CFR 1.14. Patent Bar mindset: unpublished = assume NO public access unless exception applies.

Published vs Unpublished Published applications, published abandoned applications, and issued patents are open to public inspection. Unpublished applications are NOT accessible. Trap: even published pending applications — USPTO may only provide copies, not the actual paper file.

Most Important Access Exceptions

1. Benefit claimed under 35 USC 119(e), 120, 121, 365(c), or 386(c) — earlier application may become accessible. Shortcut: Benefit claim opens access.
2. Incorporated by reference — only the incorporated PORTION becomes accessible, not the entire application.
3. Published PCT application — publication can create access rights to related US applications.

Status Information — MPEP 102 Even without full access, public may learn: pending/abandoned/patented status, whether published, application number, filing date, continuity relationship. Trap: status information does not equal full access.

Who May Authorize Access Under 37 CFR 1.14(c): applicant, practitioner of record, assignee, inventor, or certain named practitioners.

Power to Inspect Must specifically identify application and authorized person. Generally limited to one application. General authorization is often insufficient.

Petition for Access — 37 CFR 1.14(i) Third party may petition if: access necessary to carry out Act of Congress, OR special circumstances exist.

Foreign Filing Licenses — Very High Yield Core Rule — 35 USC 184: If invention made in US, cannot file abroad until 6 months after US filing OR FFL granted. FFL requirement depends on where invention was MADE, NOT citizenship.

Automatic FFL petition considered filed with US application — but license is NOT automatically granted. Must verify on filing receipt.

No FFL required when: invention not made in US, OR US application filed more than 6 months ago AND no secrecy order.

Consequences of Improper Foreign Filing — 35 USC 185/186 Can bar US patent and invalidate issued patent. Criminal penalties: fine and/or imprisonment. Patent may survive if filing was error AND invention not subject to secrecy.

Retroactive FFL — 37 CFR 5.25 Petition available for good-faith errors. Must show: verified statement, explanation of error, countries and dates, diligence after discovery. Must show facts — not conclusions.

Secrecy Orders — 35 USC 181 Issued when disclosure would harm national security. Effects: application not published, patent withheld, foreign filing restricted. Even after final rejection: prosecution must continue. Appeal not heard until order removed.

Three types: Type I (some foreign filing allowed), Type II (classified), Type III (general).

PCT Confidentiality Before PCT publication: no third-party access. After publication: some access under 37 CFR 1.14(g).