16.1 Secrecy, Application Access & Foreign Filing Licenses

16.1 Secrecy, Application Access & Foreign Filing Licenses

Confidentiality is the starting rule

Under 35 U.S.C. § 122, an unpublished patent application is generally kept confidential by the USPTO. Employees may not disclose the application, papers, or information about it except as authorized by law. Confidentiality is not absolute: publication under § 122(b), written authorization from the applicant or owner, and particular regulatory access provisions create defined exceptions.

For example, an assignee of record, an applicant, or an authorized representative may obtain access. A member of the public may obtain certain application information when the application has been published or when the file is incorporated by reference in, or claims priority to, an accessible patent or published application under the applicable rule. The exam usually turns on the legal relationship between the requested file and a public record—not on a general claim that all abandoned applications are public. An unpublished abandoned application ordinarily remains confidential unless an access rule applies.

National-security review and secrecy orders

Applications are screened for subject matter that may affect national security. Under 35 U.S.C. § 181, the Commissioner for Patents may order that an invention be kept secret and withhold publication and issuance when the appropriate defense agency determines that disclosure would be detrimental to national security. A secrecy order is not an ordinary prior-art rejection. Prosecution may continue to the extent permitted, but the patent cannot issue while the order prevents grant.

Secrecy orders are time-limited and reviewed, but they may be renewed. Applicants must comply with restrictions on disclosure and foreign filing. Section 183 supplies a potential compensation remedy for damage caused by a secrecy order, subject to its conditions; that remedy does not authorize the applicant to disregard the order. When a question mentions classified or defense-sensitive technology, separate patentability from the security restriction.

When a foreign filing license is needed

The foreign-filing rules focus on where the invention was made, not the inventor’s citizenship or the applicant’s mailing address. If an invention was made in the United States, 35 U.S.C. § 184 generally bars filing an application abroad before obtaining a license from the USPTO. Filing a U.S. application operates as a request for a license, and a license is often reflected on the filing receipt after security review.

There is an important timing alternative: if a U.S. application describing the invention has been on file for six months and no secrecy order has issued, the statute permits foreign filing without a separately issued license. The six-month rule is not permission to disclose material beyond what the U.S. filing adequately covered. If new subject matter is later developed in the United States, determine whether a supplemental license request is needed before that new material is sent abroad.

The license may authorize filing in specified countries or generally, and it does not excuse compliance with export-control laws administered outside the USPTO. The Patent Bar tests patent statutes and rules; it does not turn a USPTO license into a universal export authorization.

Consequences and a retroactive license

Sections 184 and 185 make unlicensed foreign filing serious. A U.S. patent may not be granted, or an issued patent may be invalid, to the extent the statutory conditions apply. The issue is not merely a late fee. A person can also face separate statutory consequences for prohibited disclosure while a secrecy order is in force.

Current Rule 5.25 permits a petition for a retroactive foreign filing license when the required facts show filing through error, with an additional showing that the delay in seeking the license was unintentional when the petition is filed more than six months after the foreign filing and that the required facts and fee be supplied. The petition should identify every affected foreign filing, explain the circumstances, establish the relevant dates, and confirm that the subject matter was not under a secrecy order or otherwise contrary to national-security interests. A retroactive license is discretionary relief, not automatic validation.

A reliable issue-spotting sequence

Do not confuse a foreign priority claim with a foreign filing license. Priority rules determine which filing date a U.S. application may claim. License rules restrict export and foreign filing of U.S.-made inventions. Both can appear in one scenario, but satisfying one does not satisfy the other.