This article summarizes existing controls over the disclosure and export of national security sensitive technical information in U.S. patent applications. Statutory authority to withhold the issue of patents containing national security sensitive information is provided by the Invention Secrecy Act of 19511 and the Atomic Energy Act of 1954.2 Control over the export of technical data in forms other than a patent application, such as technical publications, service manuals and computer software, is regulated by the export control laws of the Departments of State and Commerce.3
Administration of the Invention Secrecy Act(1991)
in the Patent and Trademark Office
The Invention Secrecy Act of 19514 grants authority to the Commissioner to keep inventions secret and to withhold issue of patents when necessary for the national security. Section 181 of the act established two procedures for handling sensitive patent applications that are dependent upon whether the government has a property interest in the invention. If a government interest exists, imposition of a secrecy order requires only a recommendation to the Commissioner from the involved government department or agency. However, applications in which the government does not have a property interest receive their first national security review in the PTO. They are made available by the Commissioner for inspection by the defense agencies when, in the opinion of the Commissioner, disclosure "might" be detrimental to the national security. If the agency determines that disclosure "would be detrimental" to the national security, the Commissioner places the application under secrecy order.
The Invention Secrecy Act is administered in the Patent & Trademark Office by the Special Laws Administration Group, also designated as Group 220. This group includes approximately 60 professionals, including some 50 patent examiners who are cleared to handle national security and atomic energy classified information The group is supported by approximately 30 administrative personnel.
Group 220 examiners inspect patent applications in which the government does not have a property interest to determine if they contain information that might be detrimental to the national security if patented. Government owned applications are not screened by the PTO. Each government agency is separately responsible for reviewing its own applications and notifying the PTO if they contain information the disclosure of which might be detrimental to the national security.5
The criterion for PTO referral of an application to a defense agency for their review is whether publication of the invention might be detrimental to the national security. To aid the PTO in making this determination, the Department of Defense provides extensive guidance through the Patent Security Category Review List (confidential) and the Militarily Critical Technologies List.(secret).
Patent Security Category Review List (Confidential)When the PTO finds an application that contains subject matter within the category guide list, the Licensing & Review (L&R) Branch in the Special Laws Administration Group pulls the application and refers it to the attention of each interested defense agency. These applications remain physically in the Patent & Trademark Office, and microfiche copies are sent to the defense agencies.
Prepared by ASPAB. Contains 21 group of technology, which are different from the ITAR and MCTL technology groups. Current edition: January 1971; 24 pages. Revisions: Aug. 1978 (3 pages); June 1979 (1 page); August 1984 (1 page, limited to AMC)Militarily Critical Technologies List (Secret)
Prepared by the Office of the Secretary of Defense. Provides detailed statement of technologies that DOD assesses as being crucial to military capabilities of potential adversaries. Current Edition, October 1986; approx. 500 pagesMilitarily Critical Technologies List (Unclassified)
The unclassified MCTL was developed first developed in October 1984 to inform the public of areas of technology of potential national security interest. Current Edition, October 1986; approx. 100 pages
Patent applications are usually not referred to the defense agencies for review under §181 if:
1. the government has a known property interest in the application.The Armed Services Patent Advisory Board (ASPAB) is a semi-autonomous interservice unit operated under the administrative control of the Army Judge Advocate General's intellectual property division. ASPAB serves as the conduit for referral of all patent applications from the Patent & Trademark Office to the Department of Defense. ASPAB designates the appropriate DoD technical experts to do the actual review. If it is concluded that publication or disclosure of the application would be detrimental to the national security, ASPAB recommends that the PTO impose a secrecy order, which is generally binding on the PTO.
It is assumed that the government has a property interest if the case is either:2. the invention is of foreign origin.
a. being prosecuted by a government agency, or
b. filed with national security markings.
An invention is assumed to have been made outside the U.S. only if all inventors are foreign; if at least one inventor is a U.S. citizen, the application may be sent for review. (Note: all inventions relating to atomic energy or special nuclear material are referred to DOE regardless of origin)
REVIEW AT THE DEFENSE AGENCIES
Each reviewing defense agency must first determine whether the subject matter would be classifiable under a security guideline6 (i.e., would disclosure of the subject matter harm the national security). If the subject matter would be classifiable, a secrecy order must immediately be imposed and the applicant must be informed in the secrecy order how to protect the subject matter.
Applicants known to have a DoD security agreement (a condition of most defense contracts) have proper storage facilities are obligated to protect the information under regulations set forth in the Industrial Security Manual (ISM). Thus, a secrecy order imposed on a classifiable application in which the applicant is known to have a DoD secruity agreement (referred to as a Type 2 Secrecy Order) may simply refer to the ISM to establish control over further disclosure and handling of the application.
However, if the subject matter would be classifiable but the applicant does not have a DoD security agreement, he is not obligated to protect the information in compliance with the ISM. He may, in fact, be an independent inventor with no knowledge of security procedures and no facilities for proper storage of classifiable information. Thus, the secrecy order cannot rely upon the ISM to control further disclosure. A Type 3 Secrecy Order would be imposed under these conditions, requiring the applicant to obtain specific permission from the PTO for any further disclosure of the invention. Permission may be requested from the PTO for further disclosure by filing a petition to modify the secrecy order.
Unclassified patent applications may also be placed under secrecy order. Unclassified technical information is generally subject to DoD control if it relates to militarily critical or space technology whose export is controlled by the guidelines contained in 32 CFR Part 250.7 A Type 1 Secrecy Order is used for unclassified applications under control of DoD. It is intended to permit the widest utilization of the technical data while still controlling publication or disclosure that would result in illegal exportation. This type of secrecy order sets forth the applicable export controls for technical data in either the Commodity Control List (CCL) or the Munitions List of the International Traffic in Arms Regulations (ITAR). It also identifies the countries where corresponding foreign patent applications may be filed. The secrecy order specifically authorizes legitimate business use and disclosure of the invention. The level of security control must be safeguarded under conditions that provide adequate protection and prevent access by unauthorized persons.
REVIEW OF ATOMIC ENERGY RELATED APPLICATIONS
Patent applications relating to atomic energy are considered to be particularly sensitive. Congress has provided separate authorization other than 35 USC § 181 for DOE to review all patent applications relating to special nuclear material or atomic energy under the Atomic Energy Act (as amended), 42 U.S.C. §2181(c)-(e), as follows:
"(c) Report of invention to the Commission (DOE). Any person who has made or hereafter makes any invention or discovery useful in the production of special nuclear material or atomic energy8, shall file with the Commission (DOE) a report containing a complete description thereof unless such invention or discovery is described in an application for patent filed with the Commissioner of Patents by such person within the time required for filing of such report. The report covering any such invention or discovery shall be filed on or before the one hundred and eightieth day after such person first discovers or first has reason to believe that such invention or discovery is useful in such produciton or utilization.Penalties for violation of the reporting requirments of 42 USC §2181 are set forth in § §2274-2280. Additionally, DOE has the authority under 35 USC § 181 to recommend impositon of a secrecy order, carrying penalites for violation of the secrecy order as set forth in 35 USC §§185,186.
"(d) The Commissioner of Patents shall notify the Commission (DOE) of all applications for patents heretofore or hereafter filed which, in his opinion, disclose inventions or discoveries required to be reported under subsection (c) of this section, and shall provide the Commision (DOE) access to all such applications.
"(e) Reports filed pursuant to subsection (c) of this section, and applications to which access is provided under subsection (d) of this section, shall be kept in confidence by the Commission (DOE), and no information concerning the same given without authority of the inventor or owner unless necessary to carry out the provisions of any Act of Congress or in such special circumstances as may be determined by the Commission (DOE)."
In addition to the referral requirements of 42 USC §2181, inventions relating to special nuclear material or atomic energy are also referred to DOE for property rights determinations under 42 USC §2182.
NOTES1. 35 USC §§181-188.
2. 42 USC
3. The Export Administration Act of 1979, 50 USC §§2401-2420, and the Arms Export Control Act, 22 USC 2751et seq.
4. 35 U.S.C. §§181-188.
5. 35 USC §181 reads in pertinent part:
"Whenever publication or disclosure by the grant of a patent on an invention in which the Government has a property interest might in the opinion of the head of the interested Government agency, be detrimental to the national security, the Commissioner upon being so notified shall order that the invention be kept secret and shall withold the grant of a patent therefor under the conditions set forth hereinafter.
"Whenever publication or disclosure of an invention by the granting of a patent, in which the Government does not have a property interest, might, in the opinion of the Commissioner (of Patents), be detrimental to the national security, he shall make the application for patent in which such invention is disclosed available for inspection to the Atomic Energy Commission (now DOE), 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.
"Each individual to whom the application is disclosed shall sign a dated access acknowledgment thereof, which acknowledgment shall be entered in the file of the application. If, in the opinion of the Atomic Energy Commission, the Secretary of a Defense Department, or the chief officer of another department or agency so designated, the publication or disclosure of the invention by the granting of a patent thereof would be detrimental to the national security, the Atomic Energy Commission, the Secretary of a Defense Department, or such other chief officer shall notify the Commissioner and the Commissioner shall order the invention be kept secret and shall withhold the grant of a patent for such period as the national interest requires, and notify the applicant thereof. ... "
6. The current guideline for national security classification is Executive Order 12356.
7. Statutory authority for DoD to withhold certain types of unclassified technical data from public disclosure derives from 10 U.S.C. § 140c (September 24, 1983):
"§140c. Secretary of Defense; authority to withhold from public disclosure certain technical dataRegulations implementing §140c were published as DoD Directive 5230.25 on November 6, 1984 and as 32 CFR Part 250 on December 10, 1984. They authorize DoD to withhold from public disclosure technical data under its control that is unclassified but the export of which is controlled by the guidelines contained in the classified MCTL. The regulaiton applies only to technical data that is "in the possession of, or under control of, the Department of Defense." However, the mere fact that DoD may "possess" such data does not necessarily mean that it is controlled under the regulation. The regulation does not impose additional controls on the dissemination of technical data by private enterprises or individuals beyond those specified by export control laws and regulations (i.e., the Export Control Regulations of the Department of Commerce or the International Traffic in Arms Regulations of the Department of State). Patent applications are considered to be "under control of DOD" for the purposes of this regulation based on the specific authority granted defense agencies to review patent
a. Notwithstanding any other provision of law, the Secretary of Defense may withhold ftom public disclosure any technical data with military of space application in the possession of, or under the control of, the Department of Defense, if such data may not be exported lawfully outside the United States without approval, authorization, or license under the Export Administration Act of 1979 (50 U.S.C. 2401-2420) or the Arms Export Control Act (22 U.S.C. 2751 et seq.). However, technical data may not be withheld under this section if regulations promulgated under either such Act authorize the export of such data pursuant to a general, unrestricted license or exemption in such regulations.
b. 1. Within 90 days after enactment of this section, the Secretary of Defense shall propose regulations to implement this section. Such regulations shall be published in the Federal Register for a period of no less than 30 days for public comment before promulgation. Such regulations shall address, where appropriate, releases of technical data to allies of the United States and to qualified United States contractors, including United States contractors that are small business concerns, for use in performing United States Government contracts.
2. In this section, "technical data with military or space application" means any blueprints, drawings, plans, instructions, computer software and documentation, or other technical information that can be used, or adapted for use, to design, engineer, produce, manufacture, operate, repair, overhaul, or reproduce any military or space equipment or technology concerning such equipment."
8. 42 U.S.C. 2014. Definitions
c) the term "atomic energy" means all forms of energy released in the course of nuclear fission or nuclear transformation. ...
u) the term "produce," when used in relation to special nuclear material, means (1) to manufacture, make, produce, or refine special nuclear material; (2) to separate special nuclear material from other substances in which such material may be contained; Or (3) to make or to produce new special nuclear material. ..
z) the term "source material" means (1) uranium, thorium, or any other material which is determined by the Commission (DOE) pursuant to the provisions of section 2091 of this title to be source material; or (2) ores containing one or more of the foregoing materials, in such concentration as the Commission (DOE) may by regulation determine from time to time.
aa) the term "special nuclear material" means (1) plutonium, uranium enriched in the isotope 233 or of in the isotope 235, and any other material which the Commission, pursuant to the provisions of section 2071 of this title, determines to be special nuclear material, but does not include source material; or (2) any material artificially enriched by any of the foregoing, but does not include source material..."
STATUTES AND REGULATIONS
PERTAINING TO CONTROL OF TECHNICAL DATA
Patent & Trademark Office 35 USC 122 Confidential Status of Patent Applications 35 USC 133 Time for Prosecuting Application 35 USC 151 Issue of Patent 35 USC 181-184 Secrecy of Inventions, Foreign Filing, Licensing and Penalties 35 USC 267 Time for Taking Action in Government Applications 37 CFR Part 5 37 CFR 1.103(c) Suspension of Action 37 CFR 1.113 Final Rejection or Action Department of Commerce, Bureau of Export Administration Export Control Act of 1949 Export Administration Act of 1969 50 USC 2401-2420 Export Administration Act of 1979 Export Administration Amendments Act of 1985 15 CFR 368-799 Export Administration Regulations 15 CFR Part 379 Technical Data Department of State, Office for Defense Trade (formerly Office of Munitions Control) 22 USC 2778 Arms Export Control Act of 19xx 22 USC 2658 22 CFR Part 120-130 Internations Traffic in Arms Regulations (ITAR) 22 CFR Part 121 The United States Munitions List (a part of ITAR) 22 CFR 125.01 Technical Data 22 CFR 125.04 Patents 22 CFR 125.20 Patents Department of Defense 10 USC 133(d) Authority to delegate secrecy review of patent applications to Sec. of Def.; authority to establish ASPAB 10 USC 140(c) Authorizes withholding of unclassified tech. data from public disclosure relating to critical technology with military or space applications (Sept. 1983); implemented by DOD Directive 5230.25 (11/6/84) and 32 CFR Part 250. PL 98-525 Dept. of Defense Authorization Act of 1984, amended 10 USC by specifying government and contractor rights to certain technical data in federal acquisitions 32 CFR 159.206 DOD handling of patent applications for national security review. 32 CFR Part 250 (July 1985) Codifies 10 USC 140(c) and DOD Directive 5230.25 Department of Energy 42 USC 2011 Atomic Energy Act of 1954 PL 95-242 Nuclear Non-Proliferation Act (NNPA) of 1978 42 USC 2168 1982 amendment of the Atomic Energy Act of 1954; added section 148, which prohibits the dissemination of certain non-classified defense related atomic energy information. 42 USC 5908(l) Designates ERDA (DOE) as a defense agency under 35 USC §181, making DOE eligible for referral of patent application from the PTO. 42 USC 218 l(c)-(e) Requires the PTO to refer patent applications to DOE disclosing inventions useful in the production of special nuclear material or atomic energy. 42 USC 2182 Section 152 of Public Law 703 (83rd Congress, 2nd session). DOE property rights determinations; PTO authorized to obtain property rights statements for all inventions useful in the production or utilization or atomic energy. Statements are then referred to as " 152 statements." 10 CFR Part 110 (NRC) Export and Import of Nuclear Equipment and Material 10 CFR 1017 April 1985 regulations enacting section 148 (added, 1982) of Atomic Energy Act of 1954 10 CFR Part 810 Unclassified Activities in Foreign Atomic Energy (1983) Programs 10 CFR 810.7(v) Patents National Aeronautics and Space Administration 42 USC 2457 (a)-(e) Section 305(c) of the NASA Act. NASA property rights determinations; PTO authorized to obtain property rights statements for all inventions useful in the production or utilization of special nuclear material or atomic energy. Statements are then forwarded to NASA. They are commonly referred to as "305(c) statements." 42 USC 2457 (i) Designates NASA as a defense agency under 35 USC 181, making NASA eligible for referral of patent applications from the PTO. Department of the Treasury, Office of Foreogn Assets Control 31 CFR 500-565 Controls exports to Libya, S. Africa, Vietnam, N. Korea, Kampuchia, Iraq, PRC, etc. Designation of Defense Agencies under 35 USC §181: 42 USC 5908(l) ERDA(DOE) 42 USC 2457 NASA EO 10457 (1953) Department of Justice