19 April 2012
Secrecy Orders for Economically Significant Patents
[FR Doc. 2012-9503 Filed 04/19/2012 at 8:45 am; Publication Date: 04/20/2012]
DEPARTMENT OF COMMERCE United States Patent and Trademark Office
[Docket No.: PTO-P-2012-0012]
Notice of Request for Comments on the Feasibility of Placing Economically
Significant Patents Under a Secrecy Order and the Need to Review Criteria
Used in Determining Secrecy Orders Related to National Security
AGENCY: United States Patent and Trademark Office, Department of Commerce.
ACTION: Notice of Request for Comments.
SUMMARY: Pursuant to a request from Congress, the United States Patent and
Trademark Office (USPTO) is seeking comments as to whether the United States
should identify and bar from publication and issuance certain patent applications
as detrimental to the nations economic security. The USPTO is also
seeking comments on the desirability of changes to the existing procedures
for reviewing applications that might be detrimental to national security.
DATES: Those wishing to submit written comments should submit those comments
for consideration by [Insert date 60 days from the date of publication in
the Federal Register].
ADDRESSES: Written comments should be sent by electronic mail message via
the Internet addressed to SecrecyOrder.Comments@USPTO.gov. Comments may also
be submitted by mail addressed to: Mail Stop Congressional Relations, Attention:
Jim Moore, P.O. Box 1450, Alexandra, VA 22313-1450. Although comments may
be submitted by mail, the USPTO prefers to receive comments via the Internet.
After the comment period, the written comments will be available for public
inspection at the Office of Policy and External Affairs in the Executive
Library located in the Madison West Building, 10th Floor, 600 Dulany Street,
Alexandria, Virginia, 22314. Contact: Mona Scott at email@example.com
or (571) 272-5777.
In addition, the comments from the public will also be available via the
USPTO Internet website (address:
Because comments will be made available for public inspection, information
that is not desired to be made public, such as an address or phone number
should not be included in the comments.
FOR FURTHER INFORMATION CONTACT: Jim Moore, Office of Policy and External
Affairs, by phone (571) 272-7300; by e-mail at firstname.lastname@example.org; or
by mail addressed to: Mail Stop OPEA, United States Patent and Trademark
Office, P.O. Box 1450, Alexandria, Virginia 22313-1450, ATTN: James Moore.
SUPPLEMENTARY INFORMATION: Recently, Congress has asked whether the currently
performed screening of patent applications for national security concerns
should be extended to protect economically significant patents from discovery
by foreign entities. The Commerce, Justice, Science, and Related Agencies
Subcommittees report on the 2012 Appropriations Bill stated:
By statute, patent applications are published no earlier than 18 months
after the filing date, but it takes an average of about three years for a
patent application to be processed. This period of time between publication
and patent award provides worldwide access to the information included in
those applications. In some circumstances, this information allows competitors
to design around U.S. technologies and seize markets before the U.S. inventor
is able to raise financing and secure a market. H.R. Rpt. 112-169,
at page 18 (July 20, 2011)
The Subcommittee instructed the USPTO to proceed to study these issues, stating
that the PTO, in consultation with appropriate agencies, shall develop
updated criteria to evaluate the national security applications of patentable
technologies [and] to evaluate and update its procedures with respect to
its review of applications for foreign filing licenses that could potentially
impact economic security. H.R. Rpt. 112-169, at page 19 (July 20, 2011)
In this context, the Subcommittee describes economic security
as ensuring that the United States receives the first benefits of innovations
conceived within this country, so as to promote domestic development, future
innovation and continued economic expansion.
To carry out this study, the USPTO is seeking comments from the innovation
community on the question of whether an economic security screening procedure,
which borrows from the current national security screening procedure, should
be considered. The USPTO is also seeking comments on whether the criteria
used in the national security screening procedure adequately perform the
A. Secrecy Orders
Currently, all patent applications are screened, pursuant to 35 U.S.C. 181,
to determine whether the publication or disclosure of the application might
be detrimental to national security. Such applications are routed to the
Department of Defense and other agencies designated by the President as a
defense agency of the United States for review prior to publication.
The defense agency then makes a substantive determination as to whether the
application in question should be placed under a secrecy order for such period
as the national interest requires. These agencies also provide the USPTO
with criteria used to determine what applications should be screened as well.
The owner of an application which has been placed under a secrecy order has
a statutory right to appeal from the order to the Secretary of Commerce.
The criteria used to determine whether an application should be placed under
a secrecy order for national security reasons have been set by numerous statutes,
each controlling the disclosure of a certain type of subject matter. For
example, all atomic energy information is classified pursuant to the Atomic
Energy Act of 1954 unless a positive action is taken to declassify it. The
regulations implementing the Atomic Energy Act are promulgated by the Department
of Energy, and are set forth at 10 CFR Part 810. Other applicable statutes
governing the movement of material or information to a destination outside
the legal jurisdiction of the United States include the Arms Export Control
Act of 1968 (22 U.S.C. 2751 et seq.), the Export Administration Act of 1979
(50 U.S.C. App. 2401-2420) (in force pursuant to the Presidential Notice
of August 12, 2011, titled Continuation of Emergency Regarding Export
Control Regulations, 76 Fed. Reg. 50661), and the Defense Authorization
Act of 1984 (10 U.S.C. 130).
B. Effects of Secrecy Orders on Foreign Patent Protection and Exports.
A secrecy order severely restricts the applicants ability to obtain
patent coverage outside of the United States. A secrecy order prevents U.S.
publication and patent issuance, pursuant to 35 U.S.C. 181 and 35 U.S.C.
122(b)(2)(A)(ii). A secrecy order also prevents any foreign or international
filing of the application, with very limited exceptions as set forth in 37
CFR 5.5. An applicant having a patent application under a secrecy order in
the United States who violates that order through publication, disclosure,
or filing of a foreign patent application shall be subject to abandonment
of the United States patent application, pursuant to 35 U.S.C. 182.
Under 35 U.S.C. 184, foreign filings are prohibited for applications under
secrecy orders without the concurrence of the reviewing agency that requested
the secrecy order. For United States applicants desiring to file a patent
application in a foreign country and maintain priority of invention back
to the United States filing date, a foreign application for patent must be
filed within one year of the United States filing date, in accordance with
Article 4 of the Paris Convention. If the secrecy order is lifted after that
one-year period, the United States applicant may file a patent application
in a foreign country; however, applicant will not be accorded the priority
of the United States filing date.
Where a secrecy order is applied to an international application, the application
will not be forwarded to the International Bureau as long as the secrecy
order remains in effect (PCT Article 27(8) and 35 U.S.C. 368). If the secrecy
order remains in effect, the international application will be declared withdrawn
(abandoned) because the Record Copy of the international application was
not received in time by the International Bureau (37 CFR 5.3(d), PCT Article
12(3), and PCT Rule 22.3). It is, however, possible to prevent abandonment
within the United States if the international application designates the
United States under the requirements of 35 U.S.C. 371(c); see MPEP 1832.
Additionally, a secrecy order based upon national security operates in tandem
with United States export control as set forth by statute in the Export
Administration Regulations, 15 U.S.C. 734.3(b)(1). The export of a product
covered by one of the categories for which a patent application would be
placed under a secrecy order is subject to control by the defense agency
that regulates such subject matter. If a new category of secrecy order subject
matter is to be created (economic security) the question of whether export
of that subject matter would be regulated by a United States agency would
need to be addressed. In such a case, a domestic entity having a patent
application placed under an economic secrecy order could be restricted from
exporting any product covered by that application until the secrecy order
is lifted by the USPTO operating in concert with the relevant United States
C. Currently Available Procedures to assist Maintaining Secrecy Until
Many foreign jurisdictions publish full applications at eighteen months.
Recent proposed legislation would instruct the United States Patent and Trademark
Office to publish only an abstract of the application or otherwise amend
35 U.S.C. 122 (b)(2)(B)(i). In the United States two procedures are available
to prevent a patent application from publication.
First, an applicant may request nonpublication of the application until such
time as the application issues as a patent. Under 35 U.S.C. 122(b)(2)(B)(i),
an applicant may request nonpublication upon filing of the patent application.
An applicant making such a request must certify that the invention disclosed
in the application has not and will not be the subject of an application
filed in another country, or filed under a multilateral international agreement
that requires publication of applications 18 months after filing.
The second procedure that can prevent a patent application from publication
is a secrecy order under 35 U.S.C. 181 and 35 U.S.C. 122(b)(2)(A)(ii). A
secrecy order is a Governmental directive, rather than a private elective,
which prevents an applicant from obtaining patent protection and makes the
application secret until the Government deems it advisable to the application
to proceed to issuance. A secrecy order is effective to restrict publication,
disclosure, or filing of a foreign patent application, for such period as
the national interest requires. In contrast, a nonpublication request restricts
publication of the patent application only up to the date of the issuance
of a patent, and may be rescinded by the applicant at an earlier date.
An alternative to preventing publication of a patent application is to expedite
its prosecution, which reduces the time between disclosure and patent issuance.
Prioritized examination, as authorized by Section 11(h) of the Leahy-Smith
America Invents Act, sets an aggregate time goal of 12 months for an application
to reach final disposition, which may be a final rejection or an allowance
of the claims. By submitting a request upon filing the patent application,
accompanied by the proper fees, a patent applicant may potentially receive
an issued patent prior to the 18-month publication date.
2. Scope of Requested Comments
The Subcommittee has raised the concern of a potential risk of loss of
competitive advantage during the period of time between publication and patent
grant. Taking into account the current procedures through which an applicant
may elect to defer publication of a patent application until patent issuance
or expedite its prosecution, this Notice seeks to obtain feedback on whether
the United States Government should institute a new regulatory scheme, modeled
from that applied to national security concerns. This new procedure would
institute a secrecy order that forbids applicants from disclosing subject
matter deemed to be detrimental to national economic security for such period
as the national interest requires.
Interested members of the public are invited to submit written comments on
issues that they believe relevant to whether, and under what circumstances,
the United States should extend the current framework for placing patent
applications under an order of secrecy to establish an additional screening
program based on economic factors. The USPTO has not taken a position, nor
is it predisposed to any particular views, on the following questions.
Comments on one or more of the following would be helpful:
Questions on Economic Security-Based Secrecy Orders
1. Should the USPTO institute a plan to identify patent applications relating
to critical technologies or technologies important to the United States economy
to be placed under secrecy orders?
2. Which governmental body should be designated by the President to provide
the USPTO with the final determination as to which applications should receive
3. Which mechanisms should a governmental body use, at the time a patent
application is filed, to determine that publication at 18-months of that
particular application would be detrimental to national economic security?
4. What criteria should be used in determining that dissemination of a patent
application would be detrimental to national economic security such that
an application should be placed under a secrecy order?
5. Would regulations authorizing economic secrecy orders be covered by the
current statutory authority provided to the USPTO, or would such orders require
a new statutory framework?
6. What would be the effect of establishing a new regulatory scheme based
on economic security on businesses, industries, and the economy?
7. How could Government agencies best perform such a determination while
remaining in compliance with applicable laws and treaty obligations?
8. How would such a policy affect the public notice function that underlies
the policy of publication, including the ability of United States inventors
and innovators to timely access the newest technical information upon which
to build and stay ahead?
9. What would be the impact on United States innovators, companies, and
employers? How would such a secrecy order affect United States businesses
that currently have substantial business operations or sales in foreign
10. Are the procedures currently available before the USPTO, such as
nonpublication requests and prioritized examination, sufficient to minimize
risks to applicants and allay concerns with 18-month publication of their
invention? If not, why?
11. What are the risks that an economic secrecy order regime would influence
other nations to implement similar laws? Would the global implementation
of an economic secrecy order regime benefit or hinder the progress of innovation
in the United States?
12. How would such a secrecy order regime affect international efforts toward
a more harmonized patent system?
13. Should the USPTO consider limiting what is published at 18 months?
This Notice also poses the following questions to determine the adequacy
of the criteria used to place various technologies under secrecy orders for
national security reasons.
Questions on National Security-Based Secrecy Orders
14. How should criteria currently used by United States defense agencies
to screen patent applications for potential national security-based secrecy
orders pursuant to 35 U.S.C. 181 properly encompass the scope of invention,
which may have a bearing on ensuring the United States maintains its technical
advantages in defense-related fields?
15. Are there examples where technologies that could relate to United States
defense capabilities that were excluded from consideration for a secrecy
16. What is the competitive cost to expanding the scope of the criteria used
to screen applications for security order consideration?
17. Among patent practitioners, is there a common practice of attempting
to avoid consideration for a secrecy order by drafting the patent disclosure
in such a way as to not raise national security implications of an invention?
Date: _April 16, 2012_
David J. Kappos Under Secretary of Commerce for Intellectual Property and
Director of the United States Patent and Trademark Office