Patents secrecy orders

A quick review of some of the material presented in Chapter 2 In most cases, patent applications filed after November 29, 2000, in the United States (and the rest of the world) are pubhshed approximately 18 months after the earliest application in the chain was filed. However, if the application is no longer pending (e.g., abandoned) or subject to a secrecy order, it will not be pubhshed. Also, an applicant for patent in the United States can request that the application not be pubhshed but the applicant must certify that the application has not or will not be filed in another country that requires publication 18 months after application. 

GAB2 Patent and Trademark Office delays due to interference, secrecy order, or successful appellate review (where BPAI or court reverses determination of patentability of at least one claim [allowance by examiner after a remand from BPAI is not a final decision]. GAB2 was also the basis of PTA under URAA, but for a maximum of five years, AIPA removes five-year limit. 

GABS Patent and Trademark Office fails to issue a patent within three years excluding time consumed in RCE, secrecy order, interference, or appellate review (whether successful or not), time consumed by applicant-requested delays (e.g., suspension of action up to six months for "good and sufficient cause," up to three-month delay request at time of filing RCE or CPA, up to three-year deferral of examination requested by applicant. Filing an RCE for an application filed on or after May 29, 2000 cuts off any additional PTA due to failure to issue patent within three years, but it does NOT eliminate PTA in GABl and 2. 

Amended term extension provisions, in effect for any patent filed on or afer May 29, 2000, address delays occasioned by the failure of the PTO to take certain actions within prescribed time periods. The extension is on a day-for-day basis, that is one day for each day after the prescribed period until the action is taken. An extension is also available when the PTO fails to issue a patent within 3 years of the U.S. filing date, not including time consumed by secrecy orders, appeals, or delays... 

There is no such thing as a secret patent under U.S. patent law. A patentable invention that the federal government regards as undesirable for publication is processed like any other patent application (though in a S]>ecia1 department) and kept under a Secrecy Order until the time when the order is rescinded and the patent can be awarded. 

If the applicant is not successful in overcoming the examiner s rejections and the examiner makes the rejections final, several options remain. Again the applicant may simply abandon the application and, if the application has not been and will not be published, retain the invention as a trade secret. Or, the applicant can refile the application as a divisional, continuation, or continuation-in-part application and continue prosecution in the PTO. The applicant may also appeal the examiner s rejection to the Board of Patent Appeals and Interferences within PTO. If not satisfied with the Board s decision, the applicant may appeal that decision either to the Court of Appeals for the Federal Circuit based on the record before the PTO or to a federal district court for a de novo review. If the examiner s position is overturned, the Federal Circuit or the district court can order the PTO to issue the patent. Appeal to either the Federal Circuit or a federal district court destroys the secrecy of the application as well as that of the record of the proceedings within the PTO and thus destroys any trade secrets that may have been contained therein. 

Because of Che military and other governmental interests Che Patent Office placed an order of secrecy on research and development work on most fluorochemical activities. Accordingly, most of the public did not hear of these activities until after the war was over. 

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