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[Federal Register Volume 77, Number 77 (Friday, April 20, 2012)]
[Notices]
[Pages 23662-23665]

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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.

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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

[[Page 23663]]

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 [email protected] 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 protected] or (571) 272-5777.
    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 (571) 272-7300; by email at 
[email protected]; 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.

1. Background

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 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

[[Page 23664]]

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 
agency.

C. Currently Available Procedures to Assist Maintaining Secrecy Until 
Patent Issuance

    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 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 
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 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 
the

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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 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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