[Federal Register Volume 77, Number 77 (Friday, April 20, 2012)]
From the Federal Register Online via the Government Printing Office [www.gpo.gov]
[FR Doc No: 2012-9503]
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
AGENCY: United States Patent and Trademark Office, Department of
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 nation's 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 June 19, 2012.
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
firstname.lastname@example.org or .
In addition, the comments from the public will also be available
via the USPTO Internet Web site (address: http://www.uspto.gov).
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 ; by email at
email@example.com; 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 Subcommittee's 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 desired function.
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
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 applicant's 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
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
2. Which governmental body should be designated by the President to
provide the USPTO with the final determination as to which applications
should receive this treatment?
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
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
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
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 countries?
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
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
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 order?
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?
Dated: April 16, 2012.
David J. Kappos,
Under Secretary of Commerce for Intellectual Property and Director of
the United States Patent and Trademark Office.
[FR Doc. 2012-9503 Filed 4-19-12; 8:45 am]
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