For companies and inventors working in the national security or government contracts space, protecting intellectual property (IP) is challenging to say the least. Not only do government IP rights often conflict with patents and other commercial protections, but in some scenarios, the sensitive nature of an invention can result in the issuance of a Secrecy Order. When a patent application is subject to a Secrecy Order, the patenting process can be significantly delayed, and public disclosure of the application may be prevented altogether due to national security concerns.
In this post, we’ll provide an overview of Secrecy Orders, including when they are issued, their implications for patent prosecution, and how they can impact business operations for those working with sensitive technologies.
What is a Secrecy Order?
A Secrecy Order is a directive from the U.S. government that restricts public access to certain patent applications because they contain sensitive information that could be detrimental to national security if disclosed publicly. This includes technologies related to atomic energy, military defense systems, space exploration, and aeronautics, among others. Although these topics often come to mind when thinking about Secrecy Orders, it’s important to note that the scope can extend to any technology that poses a potential risk if made public.
Secrecy Orders are typically initiated when the government identifies national security concerns related to the subject matter of a patent application. This can happen whether the applicant is working directly with a federal agency or developing the technology independently. In both cases, the United States Patent and Trademark Office (USPTO) may prevent public disclosure of the application to safeguard the country’s security interests.
Why Are Secrecy Orders Issued?
The USPTO screens patent applications to ensure they do not disclose information that could be harmful to national security. If the agency identifies potential risks, the application is referred to the relevant government departments—such as the Department of Defense (DoD), NASA, or the Department of Energy (DoE)—for a more in-depth review. If any information is deemed sensitive, a Secrecy Order is issued.
The Impact of Secrecy Orders on Patent Prosecution
Secrecy Orders have significant implications for the prosecution of U.S. patent applications. Here are the key points to be aware of:
- No Public Disclosure: Once a Secrecy Order is issued, the USPTO will suspend publication of the application. This means the application will not be made available to the public, which is typically a part of the normal patent process. In fact, the patent cannot be granted until the Secrecy Order is lifted.
- Patent Prosecution: While a Secrecy Order does not prevent the examination of the patent application itself, it does complicate the process. The USPTO will assign the application to an examiner with the necessary security clearance to review any classified information. Applicants must also retain legal counsel that possess the necessary security clearance to conduct the prosecution. Applicants must continue responding to office actions and official communications up until a notice of allowance is issued. At that point, the application is suspended until the Secrecy Order is lifted.
- International Implications: If a Secrecy Order applies to a U.S. patent application, it can have even more severe consequences for international filings. Specifically, the USPTO will not transmit the application to international patent authorities, which could result in the abandonment of the application under the Patent Cooperation Treaty (PCT) if the Order persists beyond the allotted three-month filing window.
- Export Controls and Commercial Use: A Secrecy Order not only restricts publication but can also limit the commercial use of the invention. For example, companies may be prohibited from marketing or selling the technology until the Order is lifted. The applicant must also comply with U.S. export control laws before disclosing or selling the technology overseas.
Types of Secrecy Orders
The government issues three primary types of Secrecy Orders, each with different levels of restrictions:
- Type 1 Secrecy Orders: Typically apply to military or aerospace technologies, and allow limited commercial use within the U.S. However, the applicant must adhere to export control regulations and obtain an export license for international transactions.
- Type 2 Secrecy Orders: Apply when the information is classified and requires special handling. This type of Order is typically issued by the DoD, and it requires both the applicant and the USPTO to handle the information in accordance with strict guidelines for classified materials.
- Type 3 Secrecy Orders: These are catch-all orders issued when the information is deemed a national security risk but do not fall under the other two categories. Type 3 Orders can be issued by various government agencies outside the DoD.
How to Lift a Secrecy Order
One of the most challenging aspects of a Secrecy Order is the difficulty in getting it lifted. The Order typically lasts for one year, and while the relevant government agency can decide not to renew it, they can also keep it in place indefinitely. However, applicants may petition the USPTO to have the Order rescinded or modified. Grounds for rescission can include prior publication or other circumstances where the information is no longer deemed a security threat.
In some cases, an applicant may also request permission to disclose certain aspects of the technology under a modified Secrecy Order, allowing for limited commercial activity or patent filings in foreign jurisdictions.
Consequences of Unauthorized Disclosure
The consequences of violating a Secrecy Order are severe. Unauthorized disclosure of information covered by an Order can result in both civil and criminal penalties. This includes fines of up to $10,000 and potential prison sentences of up to two years. Furthermore, failure to obtain proper authorization before filing a patent application abroad can lead to the abandonment of the application and other legal consequences.
Key Takeaways
For companies and inventors working in sensitive technological fields, understanding the potential impact of a Secrecy Order is crucial. Secrecy Orders can delay patent prosecution, restrict commercialization efforts, and complicate international filings. Navigating this process requires careful planning and, expert legal advice, and in some cases legal professionals with the necessary security clearances, to ensure compliance with U.S. security regulations.
At Martensen IP, our team of experienced patent attorneys can help guide you through the complexities of Secrecy Orders and other IP issues. If you're working with potentially sensitive technologies, it’s essential to consult with us early in the process to avoid unnecessary delays and ensure the protection of your innovations.
