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been reviewed and certifying that, to 5.1 Defense inspection of certain applicathe best of assignee's knowledge and

tions. belief, title is in the assignee seeking

5.2 Secrecy order. to take the action.

5.3 Prosecution of application under secrecy

orders; withholding patent. ISSUANCE TO ASSIGNEE

5.4 Petition for rescission of secrecy order.

5.5 Permit to disclose or modification of se88.81 Issue of patent to assignee.

crecy order.

5.6 General and group permits. (a) For a patent application, if an as

5.7 Compensation. signment of the entire right, title, and

5.8 Appeal to Secretary. interest is recorded before the issue fee is paid, the patent may issue in the LICENSES FOR FOREIGN EXPORTING AND FILING name of the assignee. If the assignee 5.11 License for filing in a foreign country holds an undivided part interest, the an application on an invention made in patent may issue jointly to the inven the United States or for transmitting tor and the assignee. At the time the

international application. issue fee is paid, the name of the as

5.12 Petition for license. signee must be provided if the patent is

5.13 Petition for license; no corresponding to issue solely or jointly to that as

application.

5.14 Petition for license; corresponding U.S. signee.

application. (b) If the assignment is submitted for

5.15 Scope of license. recording after the date of payment of

5.16 Effect of secrecy order. the issue fee, but prior to issuance of 5.17 Who may use license. the patent, the assignee may petition 5.18 Arms, ammunition, and implements of that the patent issue to the assignee. war. Any such petition must be accom 5.19 Export of technical data. panied by the fee set forth in $1.17(1) of 5.20 Export of technical data relating to this chapter.

sensitive nuclear technology.

5.25 Petition for retroactive license. (57 FR 296A2, July 6, 1992, as amended at 60 FR 20229, Apr. 25, 1995)

GENERAL

5.31 Effect of modification, rescission or li83.85 Issue of registration to assignee. cense. The certificate of registration may

5.32 Papers in English language. be issued to the assignee of the appli

5.33 Correspondence. cant, or in a new name of the appli AUTHORITY: 35 U.S.C. 6, 41, 181–188, as cant, provided that the party files a amended by the Patent Law Foreign Filing written request in the trademark appli Amendments Act of 1988, Pub. L. 100 418, 102 cation by the time the application is

Stat. 1567; the Arms Export Control Act, as being prepared for issuance of the cer

amended, 22 U.S.C. 2751 et seq., the Atomic tificate of registration, and the appro

Energy Act of 1954, as amended, 42 U.S.C.

2011 et seq., and the Nuclear Non-Proliferapriate document is recorded in the Of

tion Act of 1978, 22 U.S.C. 3201 et seq., and the fice. If the assignment or name change delegations in the regulations under these document has not been recorded in the

acts to the Commissioner (15 CFR 370.10(1), 22 Office, then the written request must CFR 125.04, and 10 CFR 810.7). state that the document has been filed

SOURCE: 24 FR 10381, Dec. 22, 1969, unless for recordation. The address of the as

otherwise noted.
signee must be made of record in the
application file.

SECRECY ORDERS
PART 4 [RESERVED]

85.1 Defense inspection of certain ap

plications. PART 5-SECRECY OF CERTAIN IN (a) The provisions of this part shall

VENTIONS AND LICENSES TO EX apply to both national and interPORT AND FILE APPLICATIONS IN

national applications filed in the Pat

ent and Trademark Office and, with reFOREIGN COUNTRIES

spect to inventions made in the United

States, to applications filed in any forSECRECY ORDERS

eign country or any international auSec.

thority other than the United States

common

Receiving Office. The (1) filing of a na- $6.2 Secrecy order.
tional or an international application
in a foreign country or with an inter-

(a) When notified by the chief officer national authority other than the

of a defense agency that publication or

disclosure of the invention by the United States Receiving Office, or (2) transmittal of an international appli- granting of a patent would be det

rimental to the national security, an cation to a foreign agency or an inter

order that the invention be kept secret national authority other than the

will be issued by the Commissioner of United States Receiving Office is con

Patents and Trademarks. sidered to be a foreign filing within the meaning of Chapter 17 of Title 35, Unit

(b) The secrecy order is directed to

the applicant, his successors, any and ed States Code.

all assignees, and their legal represent(b) In accordance with the provisions

atives; hereinafter designated as prinof 35 U.S.C. 181, patent applications

cipals. containing subject matter the disclo

(c) A copy of the secrecy order will be sure of which might be detrimental to

forwarded to each principal of record in the national security are made avail

the application and will be accomable for inspection by defense agencies

panied by a receipt, identifying the as specified in said section. Only appli

particular principal, to be signed and cations obviously relating to national

returned. security, and applications within fields

(d) The secrecy order is directed to indicated to the Patent and Trademark

the subject matter of the application. Office by the defense agencies as so re

Where any other application in which a lated, are made available. The inspec

secrecy order has not been issued distion will be made only by responsible

closes a significant part of the subject representatives authorized by the agen

matter of the application under secrecy cy to review applications. Such rep

order, the other application and the resentatives are required to sign a

subject matter should be dated acknowledgement of access ac

called to the attention of the Patent cepting the condition that information

and Trademark Office. Such a notice obtained from the inspection will be

may include any material such as used for no purpose other than the ad

would be urged in a petition to rescind ministration of 35 U.S.C. 181–188. Copies

secrecy orders on either of the applicaof applications may be made available

tions. to such representatives for inspection outside the Patent and Trademark Of

85.3 Prosecution of application under fice under conditions assuring that the secrecy orders; withholding patent. confidentiality of the applications will

Unless specifically ordered otherwise, be maintained, including the condi

action on the application by the Office tions that:

and prosecution by the applicant will (1) All copies will be returned to the

proceed during the time an application Patent and Trademark Office promptly is under secrecy order to the point inif no secrecy order is imposed, or upon dicated in this section: rescission of such order if one is im

(a) National applications under seposed, and

crecy order which come to a final re(2) No additional copies will be made

jection must be appealed or otherwise by the defense agencies.

prosecuted to avoid abandonment. ApA record of the removal and return of

peals in such cases must be completed copies made available for defense in

by the applicant but unless otherwise spection will be maintained by the Pat

specifically ordered by the Commisent and Trademark Office. Applica

sioner will not be set for hearing until tions relating to atomic energy are

the secrecy order is removed. made available to the Department of

(b) An interference will not be deEnergy as specified in 81.14 of this

clared involving national applications chapter.

under secrecy order. However, if an ap

plicant whose application is under se(Pub. L. 94–131, 89 Stat. 685)

crecy order seeks to provoke an inter(43 FR 20470, May 11, 1978)

ference with an issued patent, a notice

any significant part thereof was developed, or to which the subject matter is otherwise related. If there is no such contract, the petition must so state.

(d) Unless based upon facts of public record, the petition must be verified.

of that fact will be placed in the file wrapper of the patent. (See $1.607(d))

(c) When the national application is found to be in condition for allowance except for the secrecy order the applicant and the agency which caused the secrecy order to be issued will be notified. This notice (which is not a notice of allowance under $1.311 of this chap ter) does not require response by the applicant and places the national application in a condition of suspension until the secrecy order is removed. When the secrecy order is removed the Patent and Trademark Office will issue a notice of allowance under $1.311 of this chapter, or take such other action as may then be warranted.

(d) International applications under secrecy order will not be mailed, delivered or otherwise transmitted to the international authorities or the applicant. International applications under secrecy order will be processed up to the point where, if it were not for the secrecy order, record and search copies would be transmitted to the international authorities or the applicant. (Pub. L. 94–131, 89 Stat. 685) [43 FR 20470, May 11, 1978, as amended at 53 FR 23736, June 23, 1988) 86.4 Petition for rescission of secrecy

order. (a) A petition for rescission or removal of a secrecy order may be filed by, or on behalf of, any principal affected thereby. Such petition may be in letter form, and it must be in duplicate. The petition must be accompanied by one copy of the application or an order for the same, unless a showing is made that such a copy has already been furnished to the department or agency which caused the secrecy order to be issued.

(b) The petition must recite any and all facts that purport to render the order ineffectual or futile if this is the basis of the petition. When prior publications or patents are alleged the petition must give complete data as to such publications or patents and should be accompanied by copies thereof.

(c) The petition must identify any contract between the Government and any of the principals, under which the subject matter of the application or

86.5 Permit to disclose or modification

of secrecy order. (a) Consent to disclosure, or to the filing of an application abroad, as provided in 35 U.S.C. 182, shall be made by a “permit” or “modification” of the secrecy order.

(b) Petitions for a permit or modification must fully recite the reason or purpose for the proposed disclosure. Where any proposed disclosee is known to be cleared by a defense agency to receive classified information, adequate explanation of such clearance should be made in the petition including the name of the agency or department granting the clearance and the date and degree thereof. The petition must be filed in duplicate and be accompanied by one copy of the application or an order for the same, unless a showing is made that such a copy has already been furnished to the department or agency which caused the secrecy order to be issued.

(c) In a petition for modification of a secrecy order to permit filing abroad, all countries in which it is proposed to file must be made known, as well as all attorneys, agents and others to whom the material will be consigned prior to being lodged in the foreign patent office. The petition should include a statement vouching for the loyalty and integrity of the proposed disclosees and where their clearance status in this or the foreign country is known all details should be given.

(d) Consent to the disclosure of subject matter from one application under secrecy order may be deemed to be consent to the disclosure of common subject matter in other applications under secrecy order so long as not taken out of context in a manner disclosing material beyond the modification granted in the first application.

(e) The permit or modification may contain conditions and limitations.

85.6 General and group permits.

(a) Organizations requiring consent for disclosure of applications under secrecy order to persons or organizations in connection with repeated routine operation may petition for such consent in the form of a general permit. To be successful such petitions must ordinarily recite the security clearance status of the disclosees as sufficient for the highest classification of material that may be involved.

(b) Where identical disclosees and circumstances are involved, and consent is desired for the disclosure of each of a specific list of applications, the petitions may be joined. 85.7 Compensation.

Any request for compensation as provided in 35 U.S.C. 183 must not be made to the Patent and Trademark Office but should be made directly to the department or agency which caused the secrecy order to be issued. Upon written request persons having a right to such information will be informed as to the department or agency which caused the secrecy order to be issued.

ments thereto or divisions thereof or for the registration of a utility model, industrial design, or model, in a foreign patent office or any foreign patent agency or any international agency other than the United States Receiving Office, if the invention was made in the United States and:

(1) An application on the invention has been on file in the United States less than six months prior to the date on which the application is to be filed, or

(2) No application on the invention has been filed in the United States.

(b) The license from the Commissioner of Patents and Trademarks referred to in paragraph (a) would also authorize the export of technical data abroad for purposes related to the preparation, filing or possible filing and prosecution of a foreign patent application without separately complying with the regulations contained in 22 CFR parts 121 through 130 (International Traffic in Arms Regulations of the Department of State), 15 CFR part 379 (Regulations of the Office of Export Administration, International Trade Administration, Department of Commerce) and 10 CFR part 810 (Foreign Atomic Energy Programs of the Department of Energy).

(c) Where technical data in the form of a patent application, or in any form, is being exported for purposes related to the preparation, filing or possible filing and prosecution of a foreign patent application, without the license from the Commissioner of Patents and Trademarks referred to in paragraphs (a) or (b) of this section, or on an invention not made in the United States, the export regulations contained in 22 CFR parts 121 through 130 (International Traffic in Arms Regulations of the Department of State), 15 CFR part 379 (Regulations of Office of Export Administration, International Trade Administration, Department of Commerce) and 10 CFR part 810 (Foreign Atomic Energy Programs of the Department of Energy) must be complied with unless a license is not required because a United States application was on file at the time of export for at least six months without a secrecy order under $5.2 being placed thereon. The term “exported” means

85.8 Appeal to Secretary.

Appeal to the Secretary of Commerce, as provided by 35 U.S.C. 181, from a secrecy order cannot be taken until after a petition for rescission of the secrecy order has been made and denied. Appeal must be taken within 60 days from the date of the denial, and the party appealing, as well as the department or agency which caused the order to be issued will be notified of the time and place of hearing. The appeal will be heard and decided by the Secretary or such officer or officers as he may designate.

LICENSES FOR FOREIGN EXPORTING AND

FILING

85.11 License for filling in a foreign

country an application on an invention made in the United States or for transmitting an international

application. (a) A license from the Commissioner of Patents and Trademarks under 35 U.S.C. 184 is required before filing any application for patent including any modifications, amendments, or supple

tion. The filing receipt will indicate if a license is granted. If the initial automatic petition is not granted, a subsequent petition may be filed under paragraph (b) of this section.

(b) Petitions for license should be presented in letter form and must include the required fee ($1.17(h)), if expedited handling of the petition is also sought, the petitioner's address, and full instructions for delivery of the requested license when it is to be delivered to other than the petitioner. (35 U.S.C. 6, Pub. L. 97–247) [48 FR 2714, Jan. 20, 1983, as amended at 49 FR 13462, Apr. 4, 1984)

export as it is defined in 22 CFR parts 121 through 130, 15 CFR part 379 and 10 CFR part 810.

(d) If a secrecy order has been issued under $5.2, an application cannot be exported to, or filed in, a foreign country (including an international agency in a foreign country), except in accordance with $5.5.

(e) No license pursuant to paragraph (a) of this section is required:

(1) If the invention was not made in the United States, or

(2) If the corresponding United States application is not subject to a secrecy order under $5.2, and was filed at least six months prior to the date on which the application is filed in a foreign country, or

(3) For subsequent modifications, amendments and supplements containing additional subject matter to, or divisions of, a foreign patent application if:

(i) A license is not, or was not, required under paragraph (e)(2) of this section for the foreign patent application;

(ii) The corresponding United States application was not required to be made available for inspection under 35 U.S.C. 181 and 85.1; and

(iii) Such modifications, amendments, and supplements do not, or did not, change the general nature of the invention in a manner which would require any corresponding United States application to be or have been available for inspection under 35 U.S.C. 181 and 85.1.

(f) A license pursuant to paragraph (a) of this section can be revoked at any time upon written notification by the Patent and Trademark Office. An authorization to file a foreign patent application resulting from the passage of six months from the date of filing of a United States patent application may be revoked by the imposition of a secrecy order. [49 FR 13461, Apr. 4, 1984, as amended at 56 FR 1928, Jan. 18, 1991)

85.13 Petition for license; no cor

responding application. If no corresponding national or international application has been filed in the United States, the petition for license under $5.12(b) must be accompanied by the required fee (81.17(h)), if expedited handling of the petition is also sought, and a legible copy of the material upon which a license is desired. This copy will be retained as a measure of the license granted. For assistance in the identification of the subject matter of each license so issued, it is suggested that the petition be submitted in duplicate and provide a title and other description of the material. The duplicate copy of the petition will be returned with the license or other action on the petition. [49 FR 13462, Apr. 4, 1984)

85.14 Petition for license; correspond

ing U.S. application. (a) When there is a corresponding United States application on file, a petition for license under $5.12(b) must include the required fee (81.17(h)), if expedited handling of the petition is also sought, and must identify this application by serial number, filing date, inventor, and title, but a copy of the material upon which the license is desired is not required. The subject matter licensed will be measured by the disclosure of the United States application. Where the title is not descriptive, and the subject matter is clearly of no interest from a security standpoint, time may be saved by a short statement in

85.12 Petition for license.

(a) Filing of an application for patent for inventions made in the United States will be considered to include a petition for license under 35 U.S.C. 184 for the subject matter of the applica

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