SECRECY OF CERTAIN INVENTIONS AND LICENSES TO FILE APPLICATIONS IN FOREIGN COUNTRIES The following regulations relating to the secrecy of certain inventions and licenses to file applications in foreign countries, have been established under authority of sections 6 and 188 of title 35, United States Code, as enacted July 19, 1952, Public Law 593, chapter 950, 66 Stat. 792; they interpret or apply sections 181 to 188 of title 35. These regulations were initially published in the Federal Register for Feburary 20, 1953, 18 F.R. 1011, and amendments at subsequent times. They form part 5 of title 37 of the Code of Federal Regulations. SECRECY ORDERS Defense inspection of certain applications. Prosecution of application under secrecy order; witholding Petition for rescission of secrecy order. Sec. 5.1 5.2 5.3 5.4 5.5 5.6 5.7 5.8 Appeal to Secretary. LICENSES FOR FOREIGN FILING Permit to disclose or modification of secrecy order. General and group permits. Compensation. 5.11 License for filing application in foreign country. 5.12 Petition for license. 5.13 Petition for license; no corresponding U.S. application. 5.14 Petition for license; corresponding U.S. application. 5.15 Scope of license. 5.16 Effect of secrecy order. 5.17 Who may use license. 5.18 Arms, ammunition, and implements of war. 5.19 Export of technical data. GENERAL 5.21 Effect of modification, rescission or license. 5.22 Papers in English language. 5.23 Correspondence. 1 5.1 SECRECY ORDERS Defense inspection of certain applications. In accordance with the provisions of 35 U.S.C., section 181, applications for patent containing subject matter the disclosure of which might be detrimental to the national security are made available for inspection by defense agencies as specified in said section. Only applications obviously relating to national security, and applications within ́fields indicated to the Patent Office by the defense agencies as so related, are made available. Such inspection must be at the Patent Office and by responsible representatives of the agency who are required to sign a dated acknowledgement of such access accepting the condition that information obtained from the inspection will be used for no other purpose than in the administration of sections 181–188 of Title 35, U.S. Code. Applications relating to atomic energy are made available to the Atomic Energy Commission as specified in rule 14. 5.2 Secrecy order. (a) When notified by the chief officer of a defense agency that publication or disclosure of the invention by the granting of a patent would be detrimental to the national security, an order that the invention be kept secret will be issued by the Commissioner of Patents. (b) The secrecy order is directed to the applicant, his successors, any and all assignees, and their legal representatives; hereinafter designated as principals. (c) A copy of the secrecy order will be forwarded to each principal of record in the application and will be accompanied by a receipt, identifying the particular principal, to be signed and returned. (d) The secrecy order is directed to the subject matter of the application. Where any other application in which a secrecy order has not been issued discloses a significant part of the subject matter of the application under secrecy order, the other application and the common subject matter should be called to the attention of the Patent Office. Such a notice may include any material such as would be urged in a petition to rescind secrecy orders on either of the applications. 5.3 Prosecution of application under secrecy order; withholding patent. Unless specifically ordered otherwise, action on the application by the Office and prosecution by the applicant will proceed during the time an application is under secrecy order to the point indicated in this section: (a) Applications under secrecy order which come to a final rejection must be appealed or otherwise prosecuted to avoid abandonment. Appeals in such cases must be completed by the applicant but unless SEVENTH EDITION REVISION Revision 1, July 1970. Includes amendments to rules effective: March 7, 1970: 35 F.R. 4259, March 7, 1970; 872 O.G. 1387, March 31, 1970: Rule 181 (g). April 22, 1970: 35 F.R. 6430, April 22, 1970; 874 O.G. 688, May 19, 1970: Rules 5.18 and 5.19. Revision 2, July 1971. Includes amendments to rules effective: October 13, 1970: 35 F.R. 16043, Oct. 13, 1970; 880 O.G. 739, Nov. 17, 1970: Rule 5.1. March 30, 1971: 36 F.R. 5850, March 30, 1971; 885 O.G. 644, April 27, 1971: Rule 192. April 30, 1971: 36 F.R. 7312, April 17, 1971; 886 O.G. 424, May 18, 1971: Rules 78, 321 and form 53. June 11, 1971: 36 F.R. 8732, May 12, 1971; 887 O.G. 726, June 15, 1971: Rules 245, 251 and 287. May 28, 1971: 36 F.R. 9774, May 28, 1971; 887 O.G. 1840, June 29, 1971: Rules 59, 82, 84, 85, 87, 123 and 165. July 2, 1971: 36 F.R. 12616, July 2, 1971; O.G. 1971; Rules 14, 21, 33, 34, 35, 36, 51, 52, 57, 61, 76, 341, 343, 344, 346 and 347. September 1, 1971: 36 F.R. 12689, July 3, 1971; 889 O.G. 3, August 3, 1971: Rules 41, 60, 75, 147 and form 54. INSTRUCTIONS To bring Rules up to date: Insert this page (ii–A) ahead of "Contents" page iii. Replace the following pages with new pages transmitted It is suggested that replaced pages be retained in the back of the manual as a record of changes. Rules of Practice-July 1971 |