[author: Donald Zuhn]

On April 20th, the U.S. Patent and Trademark Office published a notice in the Federal Register (77 Fed. Reg. 23662) requesting comments as to whether the U.S. should bar certain patent applications from publication and issuance as "detrimental to the nation's economic security."  The notice also seeks comments regarding changes to existing procedures for reviewing patent applications that might be detrimental to national security.

The Office's proposal to place economically significant applications under a secrecy order comes pursuant to a request from Congress.  The notice indicates that a report on the 2012 Appropriations Bill by the Subcommittee on Commerce, Justice, Science, and Related Agencies stated that:

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 notice also indicates that the Subcommittee instructed the Office to consult with the appropriate agencies and "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."  According to the notice, the Subcommittee described "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."

Pursuant to the Subcommittee's request, the Office now seeks comments as to whether an economic security screening procedure, which borrows from the current national security screening procedure, should be considered.  The Office also seeks comments on whether the national security screening procedures are adequate.  With regard to economically significant applications, the Office "seeks to obtain feedback on whether the United States Government should institute a new regulatory scheme, modeled from that applied to national security concerns," which "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."  The Office provides a list of questions for which it seeks comment on economic security-based secrecy orders at pages 23664-65 of the notice.  A number of questions for which the Office seeks on national security-based secrecy orders is provided at page 23665 of the notice.

Comments regarding new procedures for handling applications detrimental to the nation's economic security or current procedures for handling applications detrimental to national security must be submitted by June 19, 2012.  Comments can be sent by e-mail to SecrecyOrder.Comments@USPTO.gov, or by regular mail to:  Mail Stop Congressional Relations, Attention: Jim Moore, P.O. Box 1450, Alexandra, VA 22313–1450.