Chapter 100 Secrecy, Access, National Security, and
`
`
`101 General
`
`102 Information as te Status of an Application
`103 Right of Public te Inspect Patent Files and Some
`Application Files
`164 Power to Inspect Application
`105 Disbarred Attorney Cannot Inspect
`106 Control of Yuspection by Assignee
`106.01 Rights of Assignee of Part Interest
`110 Confidential Nature of International Applications
`115 ReviewafAppicattonsforNationalSecurityaulProperty
`Rights Issues
`120 Secrecy Orders
`121 Handling ofApplications and Other Papers Bearing
`Security Markings
`130 Examination of Secrecy Order Cases
`140 Foreign Filing Licenses
`156 Statements to DOE and NASA
`151 Content of the Statements
`
`161 General
`
`35 U.S.C. 122.Confidential status ofapplications.
`Applications for patents shall be kept in confidence by the Patent
`and Trademark Office and no information concerning the same given
`without authority ofthe applicant orowner unless necessary to carry out
`the provisions ofany Act of Congress or in such special circumstances as
`may be determined by the Commissioner.
`
`18 U.S.C. 2071. Concealment, removal, or mutilation generally.
`(a} Whoeverwillfully and uniawfully conceals, removes, mutilates,
`obliterates, ordestroys, orattempts to do so,or,with intent to dosotakes
`andcarries awayanyrecord, proceeding, map, book, paper, document,or
`otherthing,filed or depositedwith any clerk orafficer ofany court ofthe
`United States, orin anypublicoffice, orwith anyjudicial or public officer
`of the United States, shall be fined not more than $2,000 orimprisoned
`not more than three years, or both.
`(b) Whoever, having the custody of any such record, proceeding,
`map, book, document, paper, or other thing, willfully and unlawfully
`conceals, removes, mutilates, obliterates, faisifies, or destroys the same,
`shall be fined not more than $2,000 or imprisoned not morethan three
`years, orboth; and shallforfeit his office andbedisqualified fram holding
`anyoffice under the United States. As used in this subsection,the term
`“office” does not include the office held by anyperson asa retired officer
`of the Armed Forces of the United States.
`
`37 CFR 1.14, Patent application preserved in secrecy.
`(a) Except as provided in § 1.11(b) pending patent applications are
`preserved in secrecy. No information wilt be given by the Office
`respecting the filing by any particular person of an application for a
`patent, the pendency of any patticular case before it, or the subject
`matterof any particular application, norwill access be given to or copies
`furnished of any pending application or papers relating thereto, without
`weittert authority in that particular application from the applicantor his
`assignee of attarney or agentof record, unless the application has been
`identified by serial numberina published patentdocumentor the United
`States ofAmerica hasbeen indicated as a Designated State ina published
`international application, in which case status information such ag
`whetheritis pending, abandoned or patented may be supplied, or unless
`it shall be necessary fo the proper conduct of business before the Office
`
`or as providedby this part. Where an application has been patented, the
`patent number andissue date may also be supplied.
`ERE HE
`
`All Patent and Trademark Office employees are le-
`gally obligated to preserve pending applications for pat-
`ents in confidence. 35 U.S.C. 122 and 18 U.S.C. 2071 im-
`pose statutory requirements which cover the handling of
`patent applications and related documents. Suspension,
`removal, and even criminal penalties may be imposed for
`violations of these statutes.
`In order to provide prompt and orderly service to the
`public, application files must be readily available to au-
`thorized Patent and Trademark Office employees atall
`times. Accordingly, in carrying or transporting applica-
`tions and related papers, care must be exercised by Pat-
`ent and Trademark Office employees, especially in corri-
`dors and elevators, to ensure that applications and re-
`-lated papersare always under employee surveillance and
`control. Application files must not be displayed or han-
`died so as to permit perusal or inspection by any unau-
`thorized memberof the public.
`Interoffice mail must be sent in appropriate enve-
`lopes.
`Nopart of any application or paper related thereto
`should be reproduced or copied except for official pur-
`poses,
`No patent application or related document may
`be removed from the premises occupied by the Pat-
`ent and Trademark Office, except for handling as re-
`quired by the issue process, unless specifically autho-
`rized by the Commissioner. If such authorization is giv-
`en, the employee having custody will be responsible for
`maintaining confidentiality and otherwise conforming
`with the requirementsoflaw.
`Applications must not be placed in desk drawers or
`other locations where they might be easily overlooked or
`are notvisible to authorized personnel.
`Whenever an application is removed from the oper-
`ating area having custody of the file, a charge on the
`PALM system must be properly and promptly made.
`Papers arriving within the groups must be properly
`and promptly placed within the appropriate files. If pa-
`pers are received with faulty identifications, this should
`be corrected at once. If papers are received at a destina-
`tion for which they are not intended due to faulty
`identification or routing, appropriate corrective action
`should be taken at once to ensure the prompt receipt
`
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`MANUAL OF PATENT EXAMINING PROCEDURE
`
`101
`
`thereof at destination. See MPEP § 508.01 and
`§ 508.03.
`All Patent and Trademark Office employees should
`bear in mindatall timesthecritical importance of ensur-
`ing the confidentiality and accessibility of patent ap-
`plication files and related documents, and in addition to
`the specific procedures referred to above, should take all
`appropriate action to that end.
`Examiners, classifiers, and other Patent and Trade-
`mark Office employees who assist public searchers by
`outlining or indicating a field of search, should also bear
`in mindthe critical importance of ensuring the confiden-
`tiality of information revealed by a searcher when re-
`questing field of search assistance. See MPEP § 1701.
`Statutory requirements and curbs regarding the use of
`information obtained by an empioyee through Govern-
`ment employmentare imposedby 15 U.S.C. 15(b) and 18
`U.S.C. 1905.
`Examiners, while holding interviews with attorneys
`and applicants, should be careful to prevent exposures of
`files and drawings of other applicants.
`Extreme care should be taken to prevent inadvertent
`disclosure of the filing daie or serial number of any ap-
`plication filed by another party. This applies not only to
`Office actions but also to notes (usually in pencil) in the
`file wrapper.
`
`TELEPHONE AND IN-PERSON REQUESTS
`FOR INFORMATION CONCERNING PENDING
`OR ABANDONED APPLICATIONS
`
`Normally no information concerning pending or
`abandoned patent applications (except reissue applica-
`tions and reexamination proceedings) may be given to
`the public without the authorization of the applicant, the
`assignee of record, or the attorney or agent of record.
`See 35 U.S.C. 122 and 37 CFR 1.14. Other exceptions
`are specified in 37 CFR 1.14.
`When handling an incoming telephone call or an in~per-
`son request for information regarding a pending or aban-
`doned patent application, no information should be dis-
`closed until the identity of the requester can be ade-
`quately verified as set forth below. Particular care must
`be exercised whena request is made for the issue date or
`patent numberassigned to a pending patent application.
`If the issue date is later than the current date (i.¢., the
`date of the request), such information may be given only
`to the applicant, or the assignee of record, or the attor-
`ney or agent ofrecord.
`
`The following procedure should be followed before
`any information about a pending or abandoned patent
`_ application is given over the telephone:
`
`the application
`(1) Obtain the caller’s full name,
`number, and the caller’s telephone number. Ask
`the callerif there is an attorneyor agent of record.
`
`(a) If there is an attorney or agent of record, ask
`for his or her registration number.If the regis-
`tration numberis not known,ask for the name
`of the attorney or agent of record. Inform call-
`er that an attorney or agent of record will be
`called after verification of his/her identity and
`that information concerning the application
`will be released to that attorney or agent.
`
`(b) If there is no attorney or agent of record, ask
`the caller why he or sheis entitled to informa-
`tion concerning the application. If the caller
`identifies himself or herself as an applicant or
`an authorized representative of the assignee of
`record, ask for the correspondence address of
`record and inform caller that his or her associ-
`ation with the application mustbe verified be-
`fore any information concerning the applica-
`tion can be released and that he or shewill be
`called back.If the caller indicates that he or she
`is not an applicant or an authorized represen-
`tative of the assignee of record, inform caller
`that no information concerning that applica-
`tion will be released.
`
`(2) Then,verify that information concerning the ap-
`plication can be released by checking PALM or
`the applicationfile.
`
`(a) If the caller stated there was an attorney or
`agent of record, the 2954 PALM screen should
`be used to verify the registration numbergiven
`or to obtain the registration numberofan at-
`torney or agent of record. Then the 3552
`PALM screen (using the registration number)
`should be used to obtain a telephone number
`for an attorney or agent of record.
`
`(b) If the caller identified himself or herself as an
`applicant or an authorized representative of
`the assignee of record, the 2950 PALM screen
`should be used to verify the correspondence
`
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`-ento anyone,
`
`
`SECRECY,ACCESS, NATIONALSECURITY,ANDFOREIGN]FILING
`
`candclassification relativettoo thespplictionmaybeggiv- os
`address of ‘record. The 2954. PALM screen
`should be used to.determineif there.is an at-
`torney or agent of record. If there is an:attor-
`PENDING ORABANDONED,NO.REFERENCE
`ney or agentof record,their telephone num-
`Tf-anApplication‘iisinpending orabandoned status
`ber can be obtained from the 3552 PALM -
`screen.
`|
`and has notbeen referredto:‘by:number and: date in a
`UnitedStates orforeign:patent or‘publishedapplication,
`status information indicating only that the applicationiis.
`pending or abandoned may be given onlyto Paterit and
`‘Trademark Office employees and parties of recordsuch
`as:
`oo
`we
`
`(3) Then,return the call using the telephone number
`as specified below.
`
`(a) If an attorney or agent. is of record in the ap-
`plication, information concerning theapplica-
`tion should only be released by calling the at-
`terney’s or agent’s telephone number ob-
`tained from the 3552 PALM screen.
`
`(b) Ef the applicant or an authorized representa-
`tive of the assignee of record requests informa-
`tion, and there is no attorney or agent of re-
`cord and the correspondence address of re-
`cord has been verified, information concern-
`ing the application can be released to thecaller
`using the telephone numbergiven by the call-
`er. If the caller’s association with the applica-
`tion cannot be verified, no information con-
`cerning the application will be released. How-
`ever, the caller should be informed that the
`caller’s association with the application could
`notbe verified.
`
`In handling an in—person request, ask the requester
`to wait while verifying their identification as in (2) above.
`
`102 Information as to Status ofan Application
`
`Status information of an application means only the
`following information:
`
`i.
`
`that the application is abandoned, or
`
`2.
`
`3.
`
`that the application is pending, or
`
`that the application was issued as a patent and the
`patent number, issue date, and classification of
`such patent.
`
`PATENTED
`
`If an application on which status information is re-
`quested has matured into a patent, the fact that the ap-
`plication is patented and the patent number, issue date,
`
`:
`(a) The applicant.
`(b) The attorney or agent ofrecord in the application.
`(c) The assignee of record in the Patent and
`Trademark Office.
`
`(d) Anyone whohasandfurnishes written author-
`ity from a, b, orc.
`
`A nonsigning inventor (37 CFR 1.47) is entitled
`to status information only after the application is ac-
`cepted. See MPEP§ 409.03(i).
`
`REFERENCED APPLICATION
`
`If an application has been referred to by number and
`date in a United States or foreign patent or published ap-
`plication, status information may be given to Patent and
`Trademark Office employees and to anyone who fur-
`nishes the Patent and Trademark Office with a written
`request citing the application in question by serial num-
`ber and date offiling. The source document (a United
`States or foreign patent or published application) must
`be identified in the written request by the country, num-
`ber, and date of such patent or application.
`
`REFERENCED APPLICATION, SOURCE
`DOCUMENT NOT PRESENTED
`
`If a written request for status information is present-
`ed without a copy of the source document, Patent and
`Trademark Office employees will check to see that the
`source document and the application in question are
`properly identified and that the source documentrefers
`to the application in question before supplying the status
`information. Requestsfor information not accompanied
`with a copy of the source document may require the Of-
`fice to obtain a copy of the source documentforverifica-
`tion before status information can be supplied, This may
`
`160 ~ 3
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`103
`
`’ MANUAL OF PATENT EXAMINING PROCEDURE
`
`(c) .Allrequestsforreexarinationforwhichthe feeunder§ 1.20(c)
`result in some delay before the desired status informa-
`hasbeenpaid,will be announced in the Official Gazette, Any reexamina-
`tion can be forwarded to the requester.
`tions at theinitiative ofthe Commissioner pursuantto§1.520willalsobe
`«
`announcedin the Official Gazette. The announcementshall includeat
`REFERENCED. APPLICATION, SOURCE
`least the date of the request, if any, the. reexamination request control
`DOCUMENT PRESENTED
`numberor the Commissionerinitiated order control number, patent
`number, title, class and subclass, name of the inventor, name of. the .
`If a copy of the source documentis presented, the Of-
`patent owner of record, and the examining group to which.
`the
`fice will verify that the United States application in ques-
`reexaminationis assigned.
`(d) All papers or copies thereof relating to a reexamination
`tion is cited therein. After checking, status information
`proceeding which have been entered of record in the patent or
`may be immediately given and the source document copy
`reexamination file are open to inspection bythe general public, and
`may be returned to the requester. In either case, at the
`capies may be furnished upon paying the fee therefor.
`time the status information is supplied, the person sup-
`(e) The file of any interference involving a patent, a statutory
`invention registration, >a reissue application< or an application on
`plying the status information marks the request “Infor-
`whichapatent hasbeen issued orwhich has beenpublished asa statutory
`mation furnished,” the date, and his or her name. There-
`inventionregistration,is open to inspection by the public, and copiesmay
`questis then placed in the file wrapper or forwarded to
`be obtained upon paying the fee therefor,if: (1) the interference has
`the appropriate area (group art unit, abandonedfiles,
`terminated, or (2) an award ofpriority orjudgment has been entered as
`to all parties and all counts.
`etc.) for inclusion in the file wrapper as part of the offi-
`cial record of the application. The applicant is not con-
`sulted. See MPEP § 203.08.
`
`37 CFR 1.14. Patent applications preserved in secrecy.
`REEES
`
`STATUS LOCATION INFORMATION FOR
`OFFICE PERSONNEL
`
`Whenit is desired to determine the current location
`or status of an application, Office personnel should use
`their PALM terminal.
`However, inasmuch asail 06 series applications prior
`to 714,000 are not currently in the PALM system, Office
`personnel requesting status/location information on
`those applications determined not to be in the PALM
`system will be requested to contact the File Information
`Unit at 308-2733 where the numerical index records of
`the above mentioned applications are maintained.
`
`103 Right ofPublic to Inspect Patent Files and
`Some Application Files [R--Z]
`
`37 CFR 1.11. Files open to the public.
`(a) After a patent has been issued or a statutory invention
`registration has been published, the specification, drawings, and all
`papers relating to the case in thefile of the patent or statutory invention
`registration are open to inspection by the public, and copies may be
`obtained upon paying the fee therefor. See § 2.27 for trademarkfiles,
`(6) 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 applicationfite, are open to inspection
`by the public, and copies may be furnished upon paying the fee therefor.
`Thefilingofreissue applicationswill be announced in theOfficialGazette
`The announcement shail
`include at feast
`the filing date, reissue
`application and original patent numbers,title, class and subclass, name
`ofthe inventor, nameofthe ownerof record, nameof the attorney or
`agentof record, and examining group towhich the reissue application is
`assigned.
`
`(e) Any request by 2 memberof the public seeking access to, or
`copies of, any pending or abandonedapplication preserved in secrecy
`pursuant to paragraphs (a) and (b)ofthis section, orany papers relating
`thereto, must
`(1) Bein the form ofa petition and be accompanied bythe petition
`fee set forth in § 1.17(i), or
`(2) Includewritten authority granting access to the memberof the
`public in that particular application from the applicantor the applicant’s
`assignee or attorney or agent of record.
`(Note, see § 1.612(a) for accessbyan interference party toa pending
`or abandoned application.)
`
`PETITION FOR ACCESS
`
`Any interested party may file a petition, accompa-
`nied by the petition fee, to the Commissioner for access
`to an application. Inasmuchas the Post Office addressis
`necessary for the complete identification of the petition-
`er, it should always be included complete with Zip Code
`number. Petitions for access are handled in the Special
`Program Law Office.
`Thepetition maybe filed either with proofof service
`of copy upon the applicant, assignee of record, orattor-
`ney or agent of record in the application to which access
`is sought, or the petition may be filed in duplicate, in
`which case the duplicate copy will be sent by the Office to
`the applicant, assignee of record, or attorney or agent of
`record in the application (hereinafter “applicant”).
`A separate petition, with fee, should be filed for each
`application
`to which
`access
`is
`desired. Each
`
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`SECRECY, ACCESS, NATIONALSECURITY, AND FOREIGN FILING
`
`103
`
`petition should show not only why access is desired, but
`also why petitioner believes he or she is entitled to ac-
`cess. The applicant will normally be given a limited peri-
`od such as 3 weeks within whichto state any objection to
`the granting of the petition for access and reasons whyit
`should by denied. Ifapplicant states that he or she has no
`objection to the requested access, the petition will be
`granted. If objection is raised or applicant does not re-
`spond, the petition will be decided on the record.
`A determination will be made whether “special circum-
`stances” are present which warrant a grant of access un-
`der 35 U.S.C. 122. See below whenthe applicationis the
`basis of a claim for benefit of an earlier filing date under
`35 U.S.C. 120 or the applicationis incorporated by refer-
`ence in a United States patent.
`
`ACCESS WHERE PATENT CLAIMS
`35 U.S.C.120 BENEFIT
`
`Whenevera patentrelies on the filing date of an ear-
`lier butstill pending application, the public is entitled to
`see the portion of the earlier application that relates to
`the common subject matter, and also what prosecution,
`if any, was had in the earlier application of subject matter
`claimed in the patent. In re Dreyfus, 137 USPQ 475
`(Comm’r Pat. 1961). Lf applicant objects to the petition
`for access, he or she must submit along with the objection
`twosets of a copy of the portion of the application that
`relates to the common subject matterincluding all mate-
`rials relating to the prosecution in the application ofthe
`subject matter claimed in the patent. Failure to submit
`these materials will result in the entire application file
`being made available to petitioner. The Office will not
`attempt to separate the noted materiais from the re-
`mainder of the application. Compare In re Marsh Engi-
`neering Co., 1913 C.D. 183 (Comm’rPat. 1913).
`
`ACCESS TO PROVISIONAL APPLICATIONS
`
`in provisional applications, access or certified copies
`will only be given to parties with written authority from a
`named inventor, the assignee of record, or the attorney
`or agentof record. Since provisional applications do not
`require an cath ordeclaration, there may be no powerof
`attorney in the application. [f the person requesting a
`certified copy is not a named inventor, assignee of re-
`cord, or an attorney or agent of record, the requested
`certified copy will be supplied to the correspondence ad-
`dress of the provisional application.
`
`ACCESS WHERE APPLICATION
`INCORPORATED BY REFERENCE-
`IN A UNITED STATES PATENT’
`
`The incorporation by reference of an application in a
`printed United States patent constitutes a special cir-
`cumstance under 35 U.S.C.122 warranting that access of
`the original disclosure of the application be granted.
`The incorporation by reference will be interpreted as a
`waiver of confidentiality of only the original disclosure as
`filed, and not the entire application file, In re Gallo, 231
`USPQ 496 (Comm’rPat. 1986). If applicant objects to ac-
`cess to the entire application file, two copies of the infor-
`mation incorporated by reference must be submitted
`along with the objection. Failure to provide the material
`within the period provided will result in the entire ap-
`plication (including prosecution) being made available
`to petitioner. The Office will not attempt to separate the
`noted materials from the remainder of the application.
`Compare In re Marsh Engineering Co., 1913 C.D. 183
`(Comm’r Pat. 1913).
`
`APPLICATION AT BOARD OF PATENT
`APPEALS AND INTERFERENCES
`
`The Board of Patent Appeals and Interferences also
`handles all petitions for access to applications involved
`in an interference **; see 37 CFR 1.612.
`
`PUBLISHED DOCUMENTS
`
`If a defensive publication, an abstract, or an abbre-
`viature has been published, the entire application is
`available to the public for inspection and obtaining cop-
`ies; see MPEP§ 711.06.
`
`REISSUE APPLICATIONS
`
`37 CFR 1.11(b) opensall reissue applicationsfiled af-
`ter March 1, 1977 to inspection by the general public.
`37 CFR1.11(b) also provides for announcement of the
`filings of reissue applicationsin the Official Gazette. This
`announcementwill give interested members of the pub-
`lic an opportunity to submit to the examiner information
`pertinent to patentability of the reissue application.
`37 CFR 1.11(b)is applicable only to those reissue ap-
`plicationsfiled on or after March 1, 1977. Those reissue
`applications previously on file will not be automatically
`open to inspection buta liberal policy will be followed by
`the Special Program Examiner in granting petitions for
`access to such applications.
`
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`103
`Forthose reissue applicationsfiled on or after March
`1, 1977, the following procedurewill be observed:
`_
`
`(1) The filing of reissue applications will be an-
`nounced in the Official Gazette and will include
`certain identifying data as specified in 37 CFR
`1.11(b). Any memberof the general public may
`request access to a particular reissue application
`filed after March 1, 1977. Since no record of such
`request is intended to be kept, an oral requestwill
`suffice. in the Record Room, only the regularap-
`plication charge card need be completed and sub-
`mitted. The charge card will not be madepart ofa
`pending or abandonedreissue application.
`
`(2) The pending reissue applicationfiles will be main-
`tained in the examining groups and inspection
`thereof will be supervised by group personnel. Al-
`though no generallimit is placed on the amountof
`time spent reviewing thefiles, the Office may im-
`pose limitations, if necessary. No access will be
`permitted while the application is actively being
`processed.
`
`(3) Where the reissue application has left the ex-
`amining group for administrative processing, re-
`quests for access should be directed to the ap-
`propriate supervisory personnelin the division or
`branch where the applicationis currently located.
`
`(4) Requests for copies of papers in the reissue ap-
`plication file must be in writing addressed to the
`Commissioner of Patents and Trademarks, Wash-
`ington, D.C. 20231 and may be either mailed or
`delivered to the Office mail room. Theprice for a
`copy of an application as filed is set forth in
`37 CFR 1.19(a)(3). Since no useful purpose is
`seen for retaining such written request for copies
`of papers in reissue applications, they should be
`destroyed after the order has been completed.
`
`REQUEST FOR REEXAMINATION
`
`All requests for reexamination and related patent
`files are available to the public. An announcementofthe
`filing of each request in which the entire fee has been
`paid and of each reexamination ordered at the initiative
`of the Commissioner under 37 CFR 1.520 will be pub-
`lished in the Official Gazette. Procedures for access and
`
`MANUAL OF PATENT EXAMINING PROCEDURE
`
`obtaining copies are the sameas those for reissue ap-
`plications indicated above. See also MPEP § 2232.
`~ 37 CER 1.14.
`‘Patent applicationspreserved in secrecy.
`“me Re
`
`(b) Except as provided in § 1.11(b) abandoned applications are
`likewise not open to public inspection, except that if an application
`referredtoina U.S. patent, orin an application inwhich the applicanthas
`filed an authorization to open:the complete application to the public,is
`abandonedandis available,it maybe inspected orcapies obtained by any
`person on written request,without notice to the applicant.
`eRe
`
`(d) Any decision ofthe Board ofPatentAppeals and Interferences,
`or any decision of the Commissioneron petition, not otherwise open to
`public inspection shali be published or made available for public
`inspection if: (1) The Commissioner believes the decision involves an
`interpretation of patent laws or regulations that would be of important
`precedent value; and (2) the applicant, or any party involved in the
`interference, does not within two months after being notified of the
`intentionto makethe decision public, object inwritingon thegroundthat
`the decision disclosesa trade secret or other confidential information.If
`adecision disclosessuch information, the applicantor party shall identify
`the deletionsin the text of the decision considered necessary to protect
`the information.If it is considered the entire decision must be withheld
`from the public to protect such information, the applicant or party must
`explain why. Applicants orpartieswillbe given time, not less than twenty
`days, to request reconsideration and seek court review before any
`portions of decisions are made public over their objection. See
`§ 2.27 for trademark applications.
`he et
`
`ABANDONED APPLICATION REFERENCED
`IN U.S. PATENT
`
`Under 37 CFR § 1.14(b), an abandonedapplication
`referred to in the text of a U.S. patent is open to public
`inspection. Note that the status of an application re-
`ferred to in the text of a U.S. patent mayinitially be ob-
`tained underthe provisions of 37 CFR § 1.14(a). Under
`37 CFR § 1.14(a), any memberof the public is entitled to
`know the current status (i.c., pending, abandoned, or
`patented) of an application identified by serial number
`in a published patent documentor the United States has
`been indicated as a Designated State in the publishedin-
`ternational application. Note that 37 CFR § 1.14(a) is
`notlimited to a U.S. patent. Status information may be
`supplied if the application is identified in any published
`patent document (worldwide). 37 CFR § 1.14(b), howev-
`er, is limited to a U.S. patent. Access to an abandoned
`application is available to any memberof the public only
`if the application is referenced in a U.S. patent.
`
`Rev. 2, Suly 1996
`
`100 ~ 6
`
`IPR2023-00939
`Apple EX1018 Page 6
`
`IPR2023-00939
`Apple EX1018 Page 6
`
`

`

`SECRECY, ACCESS, NATIONAL SECURITY, ANDFOREIGN FILING
`
`103
`
`.
`
`accordance with the proceduresset forth in Part 4 of Title 15, Code of
`Federal Regulations.
`(b) Any person whose requestfor records has beeninitially denied
`in whole orin part, or has not been timely determined, may submit a
`written appeal as provided in § 4.8 of Title 15, Code of Federal
`Regulations,
`(c) Procedures applicable in the event of service of process or in
`connection with testimony of employees on official matters and produc-
`tion ofofficial documents of the Patent and Trademark Office in civil
`legal proceedings not
`involving the. United States shall be those
`establishedin parts 15 and 15a ofTitle 15, Code of Federal Regulations.
`
`ACCESSIBILITY OF NONFINAL DISCOVERY
`OPINIONS AND ORDERSISSUED BY THE
`BOARDOF PATENT APPEALS AND
`INTERFERENCES
`
`An abandonedfile reference in a U.S. patent may be
`ordered by any memberofthe public through the File In-
`formation Unit. Orders for files stored in repositories
`within the Crystal City (Arlington,Virginia) area are
`normally filled within 4 to 8 hours. Ordersforfiles stored
`at the Federal Records Center in Suitland, Maryland,
`are normally filled within 4 to 5 days. An abandonedfile
`received by a memberof the public must be returned to
`the charge counter in the File Information Unit before
`closing the same dayit is received.
`37 CFR § 1.14(b) allows public inspection of aban-
`doned applications referred to in defensive publications.
`Access to abandonedpatent applications forming a
`part of a File Wrapper Continuation (FWC)application
`is governed by 37 CFR § 1.14(b). Further, under 37 CFR
`§ 1.62(f) where access is granted to such an abandoned
`A numberof inquiries have been received from the
`application, access may also be granted to the FWC
`patent bar and other interested persons relating to dis-
`application.
`covery practice in interferences before the Board of Pat-
`37 CFR 1.14(d) makes explicit the conditions under
`ent Appeals and Interferences. The inquiries indicate a
`which significant decisions of the Patent and Trademark
`need for making available to the public nonfinal Board
`Office will be made available to the public, and includes
`opinions, including concurring and dissenting opinions,
`reference to decisions of the Board of Patent Appeals
`as well as orders, made in the adjudication of discovery
`and Interferences and the Commissioner. The section is
`matters before the Board. While nonfinal opinions need
`applicable to decisions deemed by the Commissioner to
`not be made available to the public [5S U.S.C. 552(a)(2)],
`involve an interpretation of patent laws or regulation
`in orderto satisfy the need, copies of non—final opinions
`that would be of significant precedent value, where such
`issued by the Board will be kept inafile in the Service
`decisions are contained in either pending or abandoned
`Branch of the Board in the U.S. Patent and Trademark
`applications or in interference files not otherwise open
`Office (Crystal Gateway 2, 1225 Jefferson Davis High-
`to the public. It is applicable whetheror not the decision
`way, Room 10C01, Arlington, Virginia). Opinions in the
`is a final decision of the Patent and Trademark Office.
`file may be reviewed by the public during norma! busi-
`37 CFR 1.34(d)is considered to place a duty on the
`ness hours (8:30 A.M.to 5:00 P.M.). Copies of opinions
`Patent and Trademark Office to identify significant deci-
`may be madeby the public on reproducing equipment,or
`sions and to take the steps necessary to inform the public
`copies may be ordered at the cost set forth in 37 CFR
`of such decisions, by publication of such decisions, in
`1,19(*>b<)(3).
`whole or in part. It is anticipated, however, that no more
`In view of the provisions of 35 U.S.C. 122 and 37