This chapter discusses the confidentiality of patent applications and patent related documents. The focus is on who may or may not access particular application types.

Patent applications containing sensitive issues will be placed under a secrecy order by the PTO. Absolutely no member of the public may view these patents even after they have issued.

Foreign filing licenses must be issued if an applicant wants to apply for a patent on the same subject matter in a foreign country immediately after filing for a U.S. patent.

Chapter 100 is a minor chapter in regards to the patent bar exam. At most, you may see a question or two touching the rules related to accessing patent applications. Understand 37 C.F.R. 1.11 and 35 U.S.C. 122, which regard the files that are open to the public.

Confidentiality of Patent Applications

101 General
Patent applications must be kept confidential. Confidentiality provides for a simpler application process since there is less chance for ideas to be stolen prior to the issuance of a patent when access to applications is limited. Approved patents, however, are freely open to the public (unless they are under a secrecy order).

The confidential status of patent applications:
1. No information on the filing, status or subject matter of any patent application will be disclosed to the public.
2. No access or copies of any application or patent application papers will be given to the public.
3. Confidentiality only applies to the applications; actual existing patents are open to the public (unless they are under secrecy order).

Exceptions:
1. When written authority from the applicant is gained by a member of the public.
2. When the application is both abandoned and published.
3. The application cannot be in a file jacket of a pending application (meaning that no one is trying to continue patenting that particular invention).
4. If it is deemed necessary by the Commissioner.
5. When the material of the application is incorporated by reference in a U.S. patent.

102 Information as to Status of an Application
There are 3 major types of patent application status. These include whether the application is pending, abandoned or issued. This statute discusses the rules regarding the confidentiality of an application's status.

37 G.F.R. 1.14 Patent applications preserved in confidence
(a) Confidentiality of patent application information. Patent applications that have not been published under 35 U.S.C. 122(b) are generally preserved in confidence pursuant to 35 U.S.C. 122(a). Information concerning the filing, pendency, or subject matter of an application for patent, including status information, and access to the application, will only be given to the public as set forth in § 1.11 or in this section.
(1) Records associated with patent applications (see paragraph (g) for international applications) may be available in the following situations:
(i) Patented applications and statutory invention registrations. The file of an application that has issued as a patent or published as a statutory invention registration is available to the public as set forth in §1.11(a). A copy of the patent application-as-filed, the file contents of the application, or a specific document in the file of such an application may be provided upon request and payment of the appropriate fee set forth in § 1.19(b).
(ii) Published abandoned applications. The file of an abandoned application that has been published as a patent application publication is available to the public as set forth in §1.11(a). A copy of the application-as-filed, the file contents of the published application, or a specific document in the file of the published application may be provided to any person upon request, and payment of the appropriate fee set forth in § 1.19(b).
(iii) Published pending applications. A copy of the application-as-filed, the file contents of the application, or a specific document in the file of a pending application that has been published as a patent application publication may be provided to any person upon request, and payment of the appropriate fee set forth in § 1.19(b). If a redacted copy of the application was used for the patent application publication, the copy of the specification, drawings, and papers may be limited to a redacted copy. The Office will not provide access to the paper file of a pending application that has been published, except as provided in paragraph (c) or (h) of this section.
(iv) Unpublished abandoned applications (including provisional applications) that are identified or relied upon. The file contents of an unpublished, abandoned application may be made available to the public if the application is identified in a U.S. patent, a statutory invention registration, a U.S. patent application publication, or an international patent application publication of an international application that was published in accordance with PCT Article 21(2). An application is considered to have been identified in a document, such as a patent, when the application number or serial number and filing date, first named inventor, title and filing date or other application specific information are provided in the text of the patent, but not when the same identification is made in a paper in the file contents of the patent and is not included in the printed patent. Also, the file contents may be made available to the public, upon a written request, if benefit of the abandoned application is claimed under 35 U.S.C. 119(e), 120, 121, or 365 in an application that has issued as a U.S. patent, or has published as a statutory invention registration, a U.S. patent application publication, or an international patent application that was published in accordance with PCT Article 21(2). A copy of the application-as-filed, the file contents of the application, or a specific document in the file of the application may be provided to any person upon written request, and payment of the appropriate fee (§ 1.19(b)).
(v) Unpublished pending applications (including provisional applications) whose benefit is claimed. A copy of the file contents of an unpublished pending application may be provided to any person, upon written request and payment of the appropriate fee (§ 1.19(b)), if the benefit of the application is claimed under 35 U.S.C. 119(e), 120, 121, or 365 in an application that has issued as a U.S. patent, an application that has published as a statutory invention registration, a U.S. patent application publication, or an international patent application publication that was published in accordance with PCT Article 21(2). A copy of the application-as-filed, or a specific document in the file of the pending application may also be provided to any person upon written request, and payment of the appropriate fee (§ 1.19(b)). The Office will not provide access to the paper file of a pending application, except as provided in paragraph (c) or (h) of this section.
(vi) Unpublished pending applications (including provisional applications) that are incorporated by reference or otherwise identified. A copy of the application as originally filed of an unpublished pending application may be provided to any person, upon written request and payment of the appropriate fee (§ 1.19(b)), if the application is incorporated by reference or otherwise identified in a U.S. patent, a statutory invention registration, a U.S. patent application publication, or an international patent application publication that was published in accordance with PCT Article 21(2). The Office will not provide access to the paper file of a pending application, except as provided in paragraph (c) or (h) of this section.
(vii) When a petition for access or a power to inspect is required. Applications that were not published or patented, that are not the subject of a benefit claim under 35 U.S.C. 119(e), 120,
121, or 365 in an application that has issued as a U.S. patent, an application that has published as a statutory invention registration, a U.S. patent application publication, or an international patent application publication that was published in accordance with PCT Article 21(2), or are not identified in a U.S. patent, a statutory invention registration, a U.S. patent application publication, or an international patent application that was published in accordance with PCT Article 21(2), are not available to the public. If an application is identified in the file contents of another application, but not the published patent application or patent itself, a granted petition for access (see paragraph (h)) or a power to inspect (see paragraph (c)) is necessary to obtain the application, or a copy of the application.
(2) Information concerning a patent application may be communicated to the public if the patent application is identified in paragraphs (a)(1)(i) through (a)(1)(vi) of this section. The information that may be communicated to the public (i.e., status information) includes:
(i) Whether the application is pending, abandoned, or patented;
(ii) Whether the application has been published under 35 U.S.C. 122(b);
(iii) The application "numerical identifier" which may be:
(A) The eight-digit application number (the two-digit series code plus the six-digit serial number); or
(B) The six-digit serial number plus any one of the filing date of the national application, the international filing date, or date of entry into the national stage; and
(iv) Whether another application claims the benefit of the application (i.e., whether there are any applications that claim the benefit of the filing date under 35 U.S.C. 119(e), 120, 121 or 365 of the application), and if there are any such applications, the numerical identifier of the application, the specified relationship between the applications (e.g., continuation), whether the application is pending, abandoned or patented, and whether the application has been published under 35 U.S.C. 122(b).
(b) Electronic access to an application. Where a copy of the application papers or access to the application may be made available pursuant to paragraphs (a)(1)(i) through (a)(1)(vi) of this section, the Office may at its discretion provide access to only an electronic copy of the specification, drawings, and file contents of the application.
(c) Power to inspect a pending or abandoned application. Access to an application may be provided to any person if the application file is available, and the application contains written authority (e.g., a power to inspect) granting access to such person. The written authority must be signed by:
(1) An applicant;
(2) An attorney or agent of record;
(3) An authorized official of an assignee of record (made of record pursuant to § 3.71 of this chapter); or
(4) A registered attorney or agent named in the papers accompanying the application papers filed under § 1.53 or the national stage documents filed under § 1.495, if an executed oath or declaration pursuant to § 1.63 or § 1.497 has not been filed.
(d) Applications reported to Department of Energy. Applications for patents which appear to disclose, purport to disclose or do disclose inventions or discoveries relating to atomic energy are reported to the Department of Energy, which Department will be given access to the applications. Such reporting does not constitute a determination that the subject matter of each application so reported is in fact useful or is an invention or discovery, or that such application in fact discloses subject matter in categories specified by 42 U.S.C. 2181(c) and (d).
(e) Decisions by the Director or the Board of Patent Appeals and Interferences. Any decision by
the Director or the Board of Patent Appeals and Interferences which would not otherwise be open to public inspection may be published or made available for public inspection if:
(1) The Director believes the decision involves an interpretation of patent laws or regulations that would be of precedential value; and
(2) The applicant, or a party involved in an interference for which a decision was rendered, is given notice and an opportunity to object in writing within two months on the ground that the decision discloses a trade secret or other confidential information. Any objection must identify the deletions in the text of the decision considered necessary to protect the information, or explain why the entire decision must be withheld from the public to protect such information. An applicant or party will be given time, not less than twenty days, to request reconsideration and seek court review before any portions of a decision are made public under this paragraph over his or her objection.
(f) Publication pursuant to § 1.47. Information as to the filing of an application will be published in the
Official Gazette in accordance with § 1.47(c).
(g) International applications.
(1) Copies of international application files for international applications which designate the U.S. and which have been published in accordance with PCT Article 21(2), or copies of a document in such application files, will be furnished in accordance with PCT Articles 30 and 38 and PCT Rules 94.2 and 94.3, upon written request including a showing that the
publication of the application has occurred and that the U.S. was designated, and upon payment of the appropriate fee (see § 1.19(b)), if:
(i) With respect to the Home Copy (the copy of the international application kept by the Office in its capacity as the Receiving Office, see PCT Article 12(1)), the
international application was filed with the U.S. Receiving Office;
(ii) With respect to the Search Copy (the copy of an international application kept by the Office in its capacity as the International Searching Authority, see PCT Article 12(1)), the U.S. acted as the International Searching Authority, except for the written opinion of the International Searching Authority which shall not be available until the expiration of thirty months from the priority date; or
(iii) With respect to the Examination Copy (the copy of an international application kept by the Office in its capacity as the International Preliminary Examining
Authority), the United States acted as the International Preliminary Examining Authority, an International Preliminary Examination Report has issued, and the United States was elected.
(2) A copy of an English language translation of a publication of an international application which has been filed in the United States Patent and Trademark Office pursuant to 35 U.S.C. 154(d)(4) will be furnished upon written request including a showing that the publication of the application in accordance with PCT Article 21(2) has occurred and that the U.S. was designated, and upon payment of the appropriate fee (§ 1.19(b)(4)).
(3) Access to international application files for international applications which designate the U.S. and which have been published in accordance with PCT Article 21(2), or copies of a document in such application files, will be permitted in accordance with PCT Articles 30 and 38 and PCT Rules 44 .1, 94.2 and 94.3, upon written request including a showing that the publication of the application has occurred and that the U.S. was designated.
(4) In accordance with PCT Article 30, copies of an international application-as-filed under paragraph (a) of this section will not be provided prior to the international publication of the application pursuant to PCT Article 21(2).
(5) Access to international application files under paragraphs (a)(I)(i) through (a)(1)(vi) and (g)(3) of this section will not be permitted with respect to the Examination Copy in accordance with PCT Article 38.
(h) Access or copies in other circumstances. The Office, either sua sponte or on petition, may also provide access or copies of all or part of an application if necessary to carry out an Act of Congress or if warranted by other special circumstances. Any petition by a member of the public seeking access to, or copies of, all or part of any pending or abandoned application preserved in confidence pursuant to paragraph (a) of this section, or any related papers, must include:
(1) The fee set forth in § 1.17(h); and
(2) A showing that access to the application is necessary to carry out an Act of Congress or that special circumstances exist which warrant petitioner being granted access to all or part of the application.

No information is disclosed concerning status, including:
1. Whether the application is pending, abandoned or patented.
2. The application number and filing date.
3. Whether one or more applicants claim the benefit of the filing date.
4. Whether the application claims the benefit of the application for which status information is requested.
a. A person requesting status information may be provided the filing date of an application if at least the last 6 digits of the numerical identifier are available

How to determine the status of an application:
1. Obtain access from the applicant:
a. Send a request to the applicant identifying the application's serial number and filing date.
i. The patent must be in the national phase.
ii. The status of international applications is always kept confidential.
iii. The status of a parent application is disclosed only when the status of any pending continuation, CIP or divisional application derived from it is also disclosed.
iv. If a redacted copy of the application was used for patent application publications, the copy of the specification, drawings and papers may be limited to a redacted copy

Status information is available for an application if:
1. The application is referred to by its numerical identifier in a published patent document (U.S. patent, U.S. patent application publication, international application publication); or
2. The application is referred to by its numerical identifier in a U.S. application open to public inspection.

Access by inventors:
1. A coinventor is always entitled access to his or her application regardless of whether or not he or she signed the declaration.
A. If an oath or declaration has not yet been filed, inventorship is that which is listed in the application papers.

103 Right of Public to Inspect Patent Files and Some Application Files
This statute discusses the right the public has to inspect certain files (such as patents and certain types of applications).

§ 1.11 Files open to the public.
(a) The specification, drawings, and all papers relating to the file of an abandoned published application, except if a redacted copy of the application was used for the patent application publication, a patent, or a statutory invention registration are open to inspection by the public, and copies may be obtained upon the payment of the fee set forth in § 1.19(b)(2). See § 2.27 for trademark files.
(b) All reissue applications, all applications in which the Office has accepted a request to open the complete application to inspection by the public, and related papers in the application file, are open to inspection by the public, and copies may be furnished upon paying the fee therefor. The filing of reissue applications, other than continued prosecution applications under § 1.53(d) of reissue applications, will be announced in the Official Gazette. The announcement shall include at least the filing date, reissue application and original patent numbers, title, class and subclass, name of the inventor, name of the owner of record, name of the attorney or agent of record, and examining group to which the reissue application is assigned.
(c) All requests for reexamination for which the fee under § 1.20(c) has been paid, will be announced in the Official Gazette. Any reexaminations at the initiative of the Director pursuant to § 1.520 will also be announced in the Official Gazette. The announcement shall include at least the date of the request, if any, the reexamination request control number or the Director initiated order control number, patent number, title, class and subclass, name of the inventor, name of the patent owner of record, and the examining group to which the reexamination is assigned.
(d) All papers or copies thereof relating to a reexamination proceeding which have been entered of record in the patent or reexamination file are open to inspection by the general public, and copies may be furnished upon paying the fee therefor.
(e) The file of any interference involving a patent, a statutory invention registration, a reissue application, or an application on which a patent has been issued or which has been published as a statutory invention registration, is open to inspection by the public, and copies may be obtained upon paying the fee therefor, if:
(1) The interference has terminated or
(2) An award of priority or judgment has been entered as to all parties and all counts.

The following files are open to the public:
1. Issued patents or published statutory invention registrations.
2. All reissue applications.
3. All requests for reexamination (which will be announced in the Official Gazette provided the fee has been paid).
a. These are now available to the public in electronic form only.
4. Papers relating to reexamination proceedings.
5. Files of any interference involving a patent, a statutory invention registration, a reissue application or an issued patent may be open to the public, provided:
a. The interference has terminated.
b. An award of priority or judgment has been entered.

Access to particular types of patents

Pending or non-published abandoned patents:
1. pending or non-published abandoned patents may not be openly viewed by any member of the public, these patents have confidential status.
2. If a patent application has been published pursuant to 35 U.S.C. 122(b), then a copy of the specification, drawings, and all papers relating to the file of that published application (whether abandoned or pending) may be provided to any person upon written request and payment of the fee set forth in 37 CFR 1.19(b). See 37 CFR 1.14(a)(1)(ii) and (iii). If a redacted copy of the application was used for the patent application publication, the copy of the application will be limited to the redacted copy of the application and the redacted materials provided under 37 CFR 1.217(d).
If the published patent application is pending, the application file itself will not be available to the public for inspection. Only copies of the application file may be obtained pursuant to 37 CFR 1.14(a)(1)(iii). If the published patent application is abandoned, the entire application is available to the public for inspection and obtaining copies.

The following specific individuals may view pending or abandoned patents:
any of the inventors except in cases where the assignee has requested otherwise
any inventor who was named even if they did not sign the paperwork
any assignee (of entire or partial interest)
a licensee of entire interest (not of partial interest)
an attorney or agent of record, or anyone given written authorization from an inventor

If a U.S. patent application, publication or patent incorporates by reference, or includes a specific reference under 35 U.S.C. 119(e) or 120 to a pending or abandoned application, a copy of that application-as-filed may be provided to any person upon written request with a fee

Abandoned applications:
access to abandoned applications may be provided if:
written request is sent in and approved
the abandoned application is not in the file wrapper of a pending CPA and it is referred to:
in a U.S. patent application open to public inspection
in another U.S. application open to public inspection
in a published international application designating the U.S.

Obtaining access to an abandoned application is possible if it:
is published
is referred to in a U.S. patent
is referred to in a U.S. application open to the public
claims the benefit of a U.S. application filing date that is open to the public

Provisional applications:
provisional applications may only be viewed by parties who have gained written authority from the named applicant

Reissue applications:
reissue applications filed after March 1, 1977 are open to the public
they are announced in the Official Gazette for the public's convenience

International applications:
access to international applications is denied to all members of the public until the application becomes published internationally
however, the applicant may authorize access to a specific individual
if an international application designates the U.S. and has been published in accordance with PCT Article 21(2), incorporates by reference or claims priority under PCT Article 8 to a pending or abandoned U.S. application, a copy of that application-as-filed may be provided to any person upon written request including a showing that the publication of the application in accordance with PCT Article 21(2) has occurred and that the U.S. was designated, and upon payment of a fee

Incorporation by reference:
access to an application that is incorporated by reference in a U.S. patent may be granted to:
anyone who requests it:
however they will only receive a copy of the referenced part of the original application, not the entire application (unless the inventor gives them authority to view the entire application)
if the inventor fails to provide material within the period provided, the entire application will be provided to the requestee

Petition for access:
any pending or abandoned patent application preserved in confidence may be requested by an individual by:
sending in written authority to the applicant asking to view the application; or
by filing a petition (with the fee) which should include:
reasons why access is desired
reasons why petitioner believes he is entitled to access due to "special circumstances"
a notice that a copy of the petition was given to the applicant/owner directly or indirectly through the patent office (this is termed `servicing the applicant')

Special circumstances found acceptable for seeking access to pending applications include:
if the owner is using the patent application to interfere with a competitor's business
when a patent relies upon the application for priority
if the application is referred to in an issued patent

If access is granted, the length of time for viewing an application is:
good forever; as long as the access was granted by the agent, attorney or inventor
limited; if given by the Patent Office (due to changing circumstances)

Servicing the applicant:
the purpose of servicing the applicant is to give the applicant/owner a chance to decide if the petitioner should only be granted access to a portion of the file instead of gaining access to the entire file
servicing is not required when:
the application is incorporated in whole or part into an issued U.S. patent
the application is preserved in secrecy

35 U.S.C. 122
The previous statute (37 C.F.R. 1.14) discussed confidentiality in regards to instances when application status may be revealed to private parties within the public. 35 U.S.C. 122, controls the actions of the PTO, not private parties. It states the specific times when patent related documents will be published.

35 U.S.C. 122 Confidential status of applications; publication of patent applications.
(a) CONFIDENTIALITY.
Except as provided in subsection (b), applications for patents shall be kept in confidence by the Patent and Trademark Office and no information concerning the same given without authority of the applicant or owner unless necessary to carry out the provisions of an Act of Congress or in such special circumstances as may be determined by the Director.
(b) PUBLICATION.
IN GENERAL.
(A) Subject to paragraph (2), each application for a patent shall be published, in accordance with procedures determined by the Director, promptly after the expiration of a period of 18 months from the earliest filing date for which a benefit is sought under this title. At the request of the applicant, an application may be published earlier than the end of such 18-month period.
(B) No information concerning published patent applications shall be made available to the public except as the Director determines.
(C) Notwithstanding any other provision of law, a determination by the Director to release or not to release information concerning a published patent application shall be final and nonreviewable.
EXCEPTIONS.
(A) An application shall not be published if that application is
(i) no longer pending;
(ii) subject to a secrecy order under section 181 of this title;
(iii) a provisional application filed under section 111(b) of this title; or
(iv) an application for a design patent filed under chapter 16 of this title. (B)
(i) If an applicant makes a request upon filing, certifying that the
invention disclosed in the application has not and will not be the subject of an application filed in another country, or under a multilateral international agreement, that requires publication of applications 18 months after filing, the application shall not be published as provided in paragraph (1).
(ii) An applicant may rescind a request made under clause (i) at any time.
(iii) An applicant who has made a request under clause (i) but who subsequently files, in a foreign country or under a multilateral international agreement specified in clause (i), an application directed to the invention disclosed in the application filed in the Patent and Trademark Office, shall notify the Director of such filing not later than 45 days after the date of the filing of such foreign or international application. A failure of the applicant to provide such notice within the prescribed period shall result in the application being regarded as abandoned, unless it is shown to the satisfaction of the Director that the delay in submitting the notice was unintentional.
(iv) If an applicant rescinds a request made under clause (i) or notifies the Director that an application was filed in a foreign country or under a multilateral international agreement specified in clause (i), the application shall be published in accordance with the provisions of paragraph (1) on or as soon as is practical after the date that is specified in clause (i).
(v) If an applicant has filed applications in one or more foreign countries, directly or through a multilateral international agreement, and such foreign filed applications corresponding to an application filed in the Patent and Trademark Office or the description of the invention in such foreign filed applications is less extensive than the application or description of the invention in the application filed in the Patent and Trademark Office, the applicant may submit a redacted copy of the application filed in the Patent and Trademark Office eliminating any part or description of the invention in such application that is not also contained in any of the corresponding applications filed in a foreign country. The Director may only publish the redacted copy of the application unless the redacted copy of the application is not received within 16 months after the earliest effective filing date for which a benefit is sought under this title. The provisions of section 154(d) shall not apply to a claim if the description of the invention published in the redacted application filed under this clause with respect to the claim does not enable a person skilled in the art to make and use the subject matter of the claim.
(c) PROTEST AND PRE-ISSUANCE OPPOSITION.- The Director shall establish appropriate procedures to ensure that no protest or other form of pre-issuance opposition to the grant of a patent on an application may be initiated after publication of the application without the express written consent of the applicant.
(d) NATIONAL SECURITY.- No application for patent shall be published under subsection (b)(1) if the publication or disclosure of such invention would be detrimental to the national security. The Director shall establish appropriate procedures to ensure that such applications are promptly identified and the secrecy of such inventions is maintained in accordance with chapter 17 of this title.
-neither the publication of a foreign counterpart application or disclosure of a U.S. patent application waives confidence under 35 U.S.C. 122

Issues Regarding National Security

120 Secrecy orders
Patent applications can contain issues that are sensitive to national security. If an application is found to contain issues that could threaten national security, the PTO will place a secrecy order on it and it will be kept secret. A security review will be completed for all applications before a Notice ofAllowance is mailed to the applicant.

Secrecy order terms:
will remain in effect for 1 year from the date of its issuance
the term may be renewed for additional periods of not more than 1 year at a time upon notice by a government agency that national interest so requires it
basically, a secrecy order could be renewed as many times as necessary

Foreign Filing

140 Foreign filing licenses
If an inventor files a patent application in the U.S., he or she may not file the same application in a foreign country before six months goes by without first obtaining a foreign filing license. If the inventor illegally files in a foreign country before the 6 month waiting period without getting a license first, he or she must immediately file for a retroactive license.

No filing of a patent application is allowed in a foreign country until 6 months after filing in the U.S. or by petition for a foreign filing license. If an inventor sends off a foreign application file before 6 months after filing in the U.S. he or she may petition for a retroactive license.

A petition for a retroactive license must include:
a list of all the foreign countries the application was filed in
the dates the application was filed in each country
an oath indicating:
that the subject matter is not under a secrecy order
evidence that the license has been diligently sought
evidence that the illegal foreign filing occurred by mistake and without deceptive intent
a large penalty fee

Foreign filing licenses are not required:
if the invention was made outside of the U.S. (even if by an American)
if an inventor waits 6 months after filing the application in the U.S.

A foreign filing license may be revoked by the PTO under special circumstances

150 Statements to DOE and NASA
No patents for nuclear material or atomic energy will be issued except under special circumstances