Secrecy Orders on Patents

A patent secrecy order is a government directive that prevents a patent application from being published or granted as a patent because the invention's disclosure could harm national security: STATUTORY BASIS: 35 U.S.C. §§ 181-188 (Title 35, Chapter 17): enacted after World War II based on lessons learned about sensitive technology being published in patents; § 181: 'Whenever publication or disclosure by the grant of a patent on an application might, in the opinion of the head of any interested Government agency, be detrimental to the national security, the Commissioner of Patents shall order that the invention be kept secret and shall withhold the grant of a patent'; REVIEW PROCESS: when a patent application is filed, USPTO patent examiners review it for potentially sensitive technology; if found, the application is forwarded to the relevant government agencies for national security review (primarily the Department of Defense, Department of Energy, and NASA); review period: 30 days initially, extendable; if the reviewing agency determines the disclosure would harm national security, it notifies the USPTO and a secrecy order is imposed; DURATION: secrecy orders remain in effect for 1 year, but are renewable annually as long as national security concerns persist; some secrecy orders have remained in place for decades; SCOPE: the secrecy order covers: (a) withholding publication of the application; (b) withholding issuance of the patent; (c) prohibiting the applicant from disclosing the invention (other than to persons with security clearances); (d) prohibiting filing of corresponding patent applications in foreign countries; CRIMINAL PENALTIES: § 186: violating a secrecy order is a federal crime punishable by up to 2 years imprisonment and fines; the prohibition applies to any person having knowledge of the secrecy order, including inventors, attorneys, and company personnel.

Secrecy orders are concentrated in specific technology areas that the government has identified as national security-sensitive: DEFENSE TECHNOLOGY: conventional weapons systems; advanced explosives and propellants; military aircraft, naval vessels, and armored vehicles; guidance systems and fire control; communications security (COMSEC) equipment; cryptographic devices and algorithms; NUCLEAR TECHNOLOGY: nuclear weapons design; nuclear materials processing; nuclear reactors (especially naval reactors); SPACE TECHNOLOGY: certain satellite technologies; advanced launch vehicles; military space systems; COMMUNICATIONS AND RADAR: certain advanced radar and electronic warfare systems; classified communications protocols; signal intelligence collection technology; HOW COMMON ARE THEY: approximately 5,000-6,000 secrecy orders are currently in effect; the USPTO imposes roughly 100-200 new secrecy orders per year; some applications are immediately reviewed (sensitive subject matter codes are embedded in the examination process); CLASSIFIED APPLICATIONS: separate from secrecy orders, some applications are filed directly as classified applications — these follow a different procedure for applicants with security clearances and sponsoring government agencies; INADVERTENT DISCLOSURE: if an applicant inadvertently publishes or discloses an invention subject to a secrecy order (e.g., by publishing a research paper or giving a conference presentation before the secrecy order was received), this can constitute a violation; applicants who discover a potential secrecy issue should consult with a cleared patent attorney before making any public disclosure.

A secrecy order significantly restricts the patent applicant's rights, but the government provides certain compensatory mechanisms: LOSS OF PATENT: while the secrecy order is in effect, no patent issues; the application stays pending but no patent rights exist; the applicant cannot enforce the invention against anyone (including the government) because there is no patent; FOREIGN FILING BAR: § 186 prohibits filing corresponding patent applications in foreign countries without a foreign filing license from the USPTO; if the applicant would otherwise be entitled to foreign patent protection (PCT application, Paris Convention national phase entries), those rights are delayed or may be permanently lost depending on how long the secrecy order remains; COMPENSATION (§ 183): the applicant is entitled to compensation from the government if: (a) the government uses the invention while the secrecy order is in force; (b) the applicant suffers damages from the secrecy order that wouldn't have occurred if the patent had been granted normally; compensation must be sought by filing a claim with the head of the relevant government agency; if the agency denies the claim, the applicant may sue in the U.S. Court of Federal Claims; COMPENSATION SCOPE: reasonable royalty or other compensation for government use; damages may include lost commercial opportunities during the secrecy order period; PATENT TERM EXTENSION: § 41(g): the period of the secrecy order may be deducted from the patent term if the patent eventually issues; the patent does not lose years from its 20-year patent term just because the government kept it secret; this is one reason applicants sometimes accept long secrecy orders — the eventual patent will have a full effective term.

Yes, applicants have limited but real options to challenge or modify a secrecy order: APPEAL TO THE COMMISSIONER (§ 181): the applicant may appeal to the Commissioner of Patents if they believe the secrecy order was improperly imposed; the Commissioner reviews whether the invention actually poses a national security risk; in practice, Commissioner appeals are infrequent and rarely result in modification of the secrecy order; PETITION TO THE DEFENSE DEPARTMENT: for military-related secrecy orders, the applicant can petition the Department of Defense directly; some secrecy orders are lifted when the government determines the technology is no longer sensitive (e.g., the technology has been publicly disclosed by the government itself, or the geopolitical situation has changed); DECLASSIFICATION AND MODIFICATION: secrecy orders can be modified to allow certain disclosures (e.g., disclosures to cleared personnel at the applicant's company, or sharing with potential manufacturing partners who have security clearances); FOREIGN FILING LICENSE: even under a secrecy order, the applicant may be able to obtain a foreign filing license for specific foreign countries considered non-threatening (e.g., allied nations); applications for foreign filing licenses are submitted to the USPTO Licensing and Review; LIFTING WHEN PUBLIC: § 181 provides that if the invention is later publicly disclosed by the government, or if the technology is no longer classified, the secrecy order should be lifted; GENERAL PROSECUTION RIGHTS: even under a secrecy order, the applicant can continue to prosecute the application by responding to office actions; applicants can also file continuation applications; the priority date is preserved; REINSTATEMENT: once a secrecy order is lifted, the application is examined normally and the patent may issue.

The intersection of secrecy orders and international patent filings requires careful navigation: FOREIGN FILING LICENSE REQUIREMENT: before filing ANY patent application in a foreign country on an invention made in the United States, US law requires either: (a) the application was first filed in the US at least 6 months ago (and no secrecy order has been imposed); or (b) a specific foreign filing license was obtained; this requirement is separate from secrecy orders and applies more broadly to all inventions made in the US (§ 184); SECRECY ORDER SPECIFICALLY BARS FOREIGN FILING: a secrecy order explicitly prohibits filing in foreign countries during the order's term; even if a foreign filing license would otherwise have been issued, a secrecy order revokes or blocks it; PCT TIMING: filing a PCT application (international application under the Patent Cooperation Treaty) counts as a foreign filing; if a secrecy order is imposed AFTER a PCT application is filed but before the national phase entries, the applicant may need to seek guidance from USPTO on whether national phase entries are permitted; PARIS CONVENTION PRIORITY: the 12-month Paris Convention priority window runs regardless of the secrecy order; if the secrecy order remains in place through the entire 12-month period, the applicant loses the ability to claim priority to the US filing date in foreign filings — potentially a significant loss of international rights; MITIGATION: some applicants file a PCT application on the filing date of the US application; if a secrecy order is then imposed within the PCT 12-month priority period, they at least preserve the international application (even if they can't enter national phases); the USPTO may provide additional time for foreign filings if the secrecy order prevented timely filing; INTERNATIONAL AGREEMENTS: the US has agreements with some allied countries (UK, Canada, Australia) permitting sharing of certain classified patent applications — even under a secrecy order, limited filings in these countries may be possible with proper authorization.