The Potential Snare of Secrecy Review in U.S. Patent Prosecution

The Invention Secrecy Act of 1951, codified at 35 U.S.C. §§181-188, mandates formal agency review of United States patent applications in which the disclosure or publication of the application, “in the opinion of the head of the interested Government agency, (would) be detrimental to the national security”. In response to such a determination, “the Commissioner upon being so notified shall order that the invention be kept secret and shall withhold the grant of a patent therefor under the conditions set forth hereinafter.” If the Commissioner makes such a determination, the Commissioner “shall make the application for patent in which such invention is disclosed available for inspection to the Atomic Energy Commission, the Secretary of Defense, and the chief officer of any other department or agency of the Government designated by the President as a defense agency of the United States.” Thus was born the potentially frustrating and extended process of secrecy review in the prosecution of domestic patent applications.

Upon filing, the secrecy review screening process commences with the Office of Licensing and Review (L&R) located within Technology Center 3600 of the U.S. Patent and Trademark Office (USPTO). The Patent Application Locating and Monitoring (PALM) System discloses the current Licensing and Review (L&R) status of a given pending application, as well as its historical status. L&R code “1” corresponds to automated screening, while level “2” corresponds to manual screening by a team of Examiners. The 3rd level of review, i.e., L&R code “3”, indicates that the application is being/has been considered by an agency for further security review. An L&R code of “4” indicates that the application is currently under a Secrecy Order. Applications are required to be cleared from the secrecy screening and review process before a patent can issue. In terms of how long the entire process may take, 35 USC §184 grants an implicit foreign filing license at 6 months from the filing of the application in the U.S. However, the backlog of cases under secrecy review and other factors may cause the process to be extended well beyond the 6 month date.

At any part of the process, any of the reviewing agencies may request issuance of a Secrecy Order. The Commissioner for Patents must thereafter impose the Secrecy Order. Failure to comply with the terms of a Secrecy Order may result in abandonment of the application under 35 U.S.C. §182 and a monetary fine and/or imprisonment as specified under 35 U.S.C. §186. As a silver lining of sorts, the Secrecy Order must be reviewed annually by the Commissioner in cooperation with the recommending agency.

While an applicant for a domestic patent may seek to avoid the use of terminology that could trigger heightened agency scrutiny at the automated screening stage, doing so is not always possible. For instance, a defense contractor may seek to protect a particular weapon system, sensor platform, or piece of military equipment. Similarly, the Department of Defense, the individual service branches, NASA, or other federal agencies may seek to patent certain technologies whose structure and intended purpose can only be adequately described using terminology that, by its very nature, is likely to increase the odds of being ensnared in an extended secrecy review.

In spite of best efforts at crafting application language, it is difficult to know beforehand precisely which applications will be subjected to extended screening and review. As an example of such difficulty, U.S. Patent No. 7,952,511 employing the terms “stealth aircraft”, “Intercontinental Ballistic Missiles (ICBM)”, “satellites”, “submarine”, and “tanks” took just over 11 years to issue from the date of filing due to an extended Secrecy Order imposed at the direction of the U.S. Air Force. By contrast, U.S. Patent No. 8,662,441 with the terms “unmanned aerial vehicle”, “submarine”, and “launch system” took just over 2 years to issue, perhaps indicating that the context of terminology use in the application as a whole rather than the use of given terms in and of themselves is more likely determinative of whether a given application ultimately becomes ensnared in an extended secrecy review process. Fortunately, the process itself is well defined, with the vast majority of utility, design, plant, and U.S.-filed PCT patent applications being approved in a timely manner. Careful crafting of the application, knowledge of the steps of the secrecy review process, and communication with the Licensing & Review Office as necessary may help to minimize undue delay.

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