The U.S. Patent & Trademark Office (PTO) is responsible for reviewing patent applications and imposing secrecy orders when disclosure of an invention by publication of a patent would be detrimental to the national security. 1 A secrecy order withholds the grant of a patent, orders that the invention be kept in secrecy and restricts filing of foreign patent applications.
The Secrecy Order Program(Rev. 6/27/91)
United States Patent & Trademark Office
Secrecy orders provide a security procedure to prevent technical data contained in a patent application from being disclosed in a manner that would be detrimental to the national security. Secrecy orders are imposed by the PTO upon specific recommendation by defense agencies, including the Army, Navy, Air Force, National Security Agency, Department of Energy and National Aeronautics and Space Administration.
The PTO conducts an initial security screening of all patent applications. Government-owned applications are not reviewed by the PTO for technical content. It is the responsibility of the cognizant defense agencies to review their own applications and recommend a secrecy order to the PTO where appropriate.
Applications in which there is no apparent government property interest are made available by the PTO to defense agencies for their inspection when, in the opinion of the Commissioner of Patents, disclosure "might be detrimental" to the national security. If, upon inspection, a defense agency deterinines that disclosure "would be detrimental" to the national security, it may recommend that the Commissioner of Patents place a secrecy order on the application.
The PTO screens applications in light of guidance provided by the defense agencies. The principal source of this guidance is the Patent Security Category Review List (PSCRL), which describes technical data where disclosure by the grant of a patent might be detrimental to the national security. The PSCRL is further supplemented by the Militarily Critical Technologies List (MCTL), the Commodity Control List (CCL) and the United States Munitions List (USNIEL) contained in the International Traffic in Arms Regulations (ITAR).
Applications are referred to agencies within the Department of Defense through the Armed Services Patent Advisory Board (ASPAB) which coordinates the reviews and forwards the results back to the PTO. If a DoD agency determines that publication of an application would be detrimental to the national security, it notifies ASPAB which forwards a secrecy order recommendation to the PTO. ASPAB is the sole authority for secrecy order recommendations from DoD.
Three specialized secrecy orders have been established to handle the different sensitivity levels and degree of government ownership of technical information in patent applications. These secrecy orders are intended to permit broader disclosure of the subject matter in a patent application consistent with the varied levels of control required for that subject matter.
These orders are commonly identified as type 1, 2 and 3 secrecy orders, each having a different purpose and effect as follows. Broadly, a type 1 secrecy order is used for applications containing technical data whose export is controlled under current U.S. export control laws and regulations. A type 2 secrecy order is used for those patent applications containing technical data that is classified under Executive Orders 10865 and 12356 or is "classifiable" under a security guideline where the applicant has a current security agreement with DoD. A type 3 secrecy order is used in all instances where a type 1 or 2 order is not appropriate, e.g., for applications containing classifiable subject matter where the owner does not have a security agreement with DoD. Details of each type of secrecy order follow.
I. Type 1 Secrecy Order
A type 1 secrecy order applies to patent applications containing unclassified subject matter that cannot be lawfully exported under existing U.S. export control laws without government approval.
A type 1 secrecy order is only imposed upon recommendation from the Department of Defense.2 This secrecy order is intended to permit the widest utilization of unclassified technical data while still restricting publication of the invention which would lead to unlawful exportation of technical data. The secrecy order sets forth the applicable export controls for technical data in either the Commodity Control List (CCL) of the Export Administration, U.S. Department of Commerce, or the Munitions List of the International Traffic in Arms Regulations (ITAR), Office of Defense Trade, U.S. Department of State.
A type 1 secrecy order permits broad disclosure of the invention for "legitimate business purposes."3 This includes production and sale within the U.S. and production and sale for the commercial foreign marketplace, providing all parties are notified of the secrecy order and that any required export license is obtained.
Since a type 1 secrecy order authorizes disclosure for legitimate business purposes, compliance with a type I secrecy order essentially reduces to compliance with existing U.S. export control regulations. Simply stated, a type 1 secrecy order specifically authorizes the disclosure of any information for which an export license has been obtained. No further license from the PTO is necessary or required.
The level of security control required for an application under a type 1 secrecy order is that it be safeguarded under conditions which provide "adequate" protection and prevent access to "unauthorized" persons. It does not require protection as classified information.
II. Type 2 Secrecy Order
This secrecy order is used for patent applications which contain technical data that is either classified under Executive Order 12356 or properly classifiable under a security guideline and the patent application owner has a current DoD Security Agreement, DoD Form 441.4 The applicant. must protect the technical data at the specified classification level under provisions of the ISM. Any disclosure of information beyond that authorized under the ISM (e.g., disclosure to uncleared personnel) requires modification of the secrecy order.
The intent of a type 2 secrecy order is to treat classified/classifiable information in a patent application in the same manner as any other classified material under the ISM. Accordingly, this secrecy order includes notification of the classification level of the technical data in the application, and provides a level of protection at that classification level.
Imposition of type 2 secrecy orders has caused difficulties for some patent attorneys, facilities participating in the Defense Industrial Security Program and the Defense Investigative Service in its inspection role. Often the patent attorney or agent handling the application does not have the appropriate facility security clearance or safeguarding capability. It is also not uncommon for a type 2 secrecy order to be imposed on the basis of the facility clearance status of the patent attorney or agent handling the application rather than the security status of the inventor or owner of the application. It may be that neither the inventor or owner of the invention are participants in the program. A type 2 secrecy order is inappropriate under these circumstances.
Another concern is that a type 2 secrecy order specifies a level of security classification (i.e., confidential, secret or top secret) but does not convey the classification authority, downgrading/declassification instructions, or requisite portion and page markings. This effectively precludes the holders of the technical data from complying with all applicable ISM requirements and creates substantial difficulties in classifying related subject matter and in transmitting/disclosing the technical data itself. Without indication, for example, of which portions of the document are classified, the entire contents of the patent application must be treated as classified.
Facilities encountering problems complying with a type 2 secrecy order may directly query the agency sponsoring the secrecy order for appropriate classification guidance. However, a modification of the secrecy order must be obtained from the PTO before any disclosure is made beyond that authorized under the ISM.
III. Type 3 Secrecy Order
This secrecy order is used for patent applications which contain technical data that would be classified based upon its technical content, but cannot be classified or placed under a type 2 secrecy order because there is no known government property interest in the invention.
Information subject to a type 3 secrecy order is not required to be protected as classified or under the provisions of the ISM. However, since the information is of classifiable sensitivity level but is not subject to either classification or ISM controls, the type 3 secrecy order prohibits any further disclosure of the invention without specific approval of the PTO.
ASPAB has established the following guidelines for determining which type of secrecy order is appropriate in a given patent application.5
A. Determine which of two basic categories the technical information falls within:
(1) classified/classifiable information, or
(2) unclassified information whose export is controlled by the guidelines contained in the MCTL.
B. If the information is classified/classifiable, a type 2 secrecy order is recommended if the owner of the application has a current DoD Security Agreement, DD Form 441, and a type 3 secrecy order is recommended if the owner does not have a current DoD Security Agreement. In order to determine whether the owner has a DoD Security Agreement, the ASPAB reviewer can call the relevant DoD security offices, DOSCO, DSI or OISI which keeps this information.
C. If the technical information is unclassified, the reviewer determines whether the export of the unclassified technical data is controlled by the guidelines contained in the classified Militarily Critical Technologies List (MCTL). If so, a type 1 secrecy order is recommended. Using the particular section of the MCTL, the reviewer uses the unclassified cross-reference to obtain the Export Control Commodity Number (ECCN) from the Commodity Control List (CCL) of the Commerce Department or the International Traffic in Arms Regulations (ITAR) section of the Office of Defense Trade, Department of State. Either the ECCN reference or the ITAR reference are included in the type 1 secrecy order recommendation from ASPAB.
Additional Secrecy Review for Atomic Energy ApplicationsPatent applications relating to atomic energy are considered particularly sensitive. The Department of Energy has separate authority under the Atomic Energy Act to review all patent applications relating to "atomic energy" or "special nuclear material."6 However, this authority extends only to the right of DOE to review the applications. The PTO still requires that DOE make a secrecy order recommendation under 35 USC � 181 if they seek to withhold publication of a patent.
NOTES1. The Invention Secrecy Act of 1951, 35 USC ��181-188.
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.
"...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. ... " (underlining added)
2. Type I secrecy orders are based upon the Department of Defense Authorization Act of 1984 (10 USC �140(c)) which granted DoD authority to withhold from public disclosure unclassified technical data relating to militarily critical or space technology, as follows:
"�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 mean that it is controlled under this directive. The directive does not impose additional DoD 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). While the directive only applies to DoD control over technical data in its possession or under its control and makes no reference to secrecy orders, the procedures therein are being used by DoD to make secrecy order determininations in all applications, including those outside of its possession or control.
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."
3. "Legitimate business purposes" as defined in DoD Directive 5230.25 include:
"(1) providing or seeking to provide equipment or technology to a foreign government with the approval of the U.S. government (for example, through a licensed direct foreign military sale).
(2) Bidding, or preparing to bid, on a sale of surplus property.
(3) Selling or producing products for the commercial domestic maretplace or the commercial foreign marketplace providing that any required export license is obtained.
(4) Engaging in scientific research in a professional capacity. ... "
4. The significance of a DoD security agreement is that it obligates the inventor to handle and protect the information as classified under the provisions set forth in the Industrial Security Manual (ISM), DoD 5220.22-M. The ISM provides specific instructions and restrictions on the handling and storage of classified information. Thus, a type 2 secrecy order does not require detailed guidance on proper storage and handling of classified information. Reference is simply be made to the ISM.
5. See ASPAB memorandum dated 25 Nov 86 titled "Interim Procedures for Use of Revised Secrecy Orders."
6. The Atomic Energy Act of 1954, 42 U.S.C. �2181(c)-(e), provides:
"(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 energy, 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 production or utilization.Other pertinent statutory and regulatory provisions authorizing DOE to control disclosure of nuclear technology include:
"(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 Commission (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)."
1. 10 CFR Part 810 (effective February 4, 1983; based on 42 USC ��2157, 2158).
The Atomic Energy Act of 1954 was amended in 1978 pursuant to the Nuclear Non-Proliferation Act of 1978 (NNPA), by the addition of new sections 127 and 128 to the Atomic Energy Act (codified as 42 USC �� 2158 and 2157, respectively). These new sections specified additional export controls on nonclassified, sensitive nuclear technology for peaceful purposes. They only applied to certain countries (basically those non-nuclear weapons states not subscribing to the Treaty on Non-Proliferation of Nuclear Weapons (NPT) of 1968), and only to the export of "Sensitive nuclear technology," i.e., nuclear technology which is not available to the public and which is important to the design, construction, fabrication, operation or maintenance of a uranium enrichment or nuclear fuel processing facility or a facility for the production of heavy water.
2. 10 CFR Part 1017 (effective May 22, 1985; based on 42 USC �2168).
The Atomic Energy Act of 1954 was amended in 1982 by the addition of new section 148 (codified as 42 USC � 2168). The purpose of this new section was to reduce the chance of terrorism or criminal acts against U.S. atomic energy defense facilities by controlling the public disclosure of nonclassified information concerning nuclear weapons and nuclear defense facilities. This information is referred to in the regulations as Unclassified Controlled Nuclear Information (UCNI). The implementing regulations for 10 CFR Part 1017, published in the Federal Register on April 22, 1985, included an appendix that provided the following examples of UCNI:
The purpose of this appendix is to provide examples of specific types of government information that are Unclassified Controlled Nuclear Information (UCNI). This list is not intended to be a permanent, fixed listing of all UCNI, but rather represents exanWles of types of information determined to be UCNI.
B. Examples of Unclassified Controlled Nuclear Information
1. Category A. Unclassified Controlled Production or Utilization Facility Design Information includes unique or critical aspects of-
a. The design or operation of a reactor or reactor component used for the production of nuclear material for atomic energy defense programs;
b. The design or operation of any facility which processes or separates nuclear material for atomic energy defense programs; or
c. The design of naval nuclear propulsion reactor plants or their components.
2. Category B. Unclassified Controlled Safeguard, and Security Information includes-
a. Security plans and proceduresfor production or utilization facilities, nuclear material contained in such facilities, or nuclear material in transit (e.g., security inspector or guard orders, patrol schedules, security codes);
b. Security equipment for protection of production or utilization facilities, nuclear material contained in such facilities, or nuclear material in transit (e.g., alarm system designs, characteristics of);
c. Capabilities, deficiencies, or vulnerabilities of a specified security plan, procedure or system.
3. Category C. Declassified Controlled Nuclear Weapon Information includes-
a. Any design of an actual or hypothetical nuclear weapon, except for specific examples of such designs approved for public release by the Assistant Secretary for Defense Programs;
b. Any manufacturing technique or process which could be of major assistance in the illegal production of a nuclear weapon or a component of a nuclear weapon; or
c. Information related to the utilization of nuclear weapons which could assist a potential criminal in an act of sabotage or theft of a nuclear weapon or a component of a nuclear weapon."
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
[note: 37 CFR Part 5 has been modified since this document was prepared. Click here for the 1998 edition of the regulation.]
37 CFR 5.2. Secrecy order.
(a) When notified by the chief officer of a defense agency that publication or disclosure of the invention by the granting of a patent would be detrimental to the national security, an order that the invention be kept secret will be issued by the Commissioner of Patents and Trademarks.
(b) The secrecy order is directed to the applicant his successors, any and all assignees, and their legal representatives; hereinafter designated as principals.
(c) A copy of the secrecy order will be forwarded to each principal of record in the application and will be accompanied by a receipt, identifying the particular principal, to be signed and returned.
(d) The secrecy order is directed to the subject matter of the application. Where any other application in which a secrecy order has not been issued discloses a significant part of the subject matter of the application under secrecy order, the other application and the common subject matter should be called to the attention of the Patent and Trademark Office. Such a notice may include any material such as would be urged in a petition to rescind secrecy orders on either of the applications.
37 CFR 5.3. Prosecution of application under secrecy orders; withholding patent.
Unless specifically ordered otherwise, action on the application by the Office and prosecution by the applicant will proceed during the time an application is under secrecy order to the point indicated in this section:
(a) National applications under secrecy order which come to a final rejection must be appealed or otherwise prosecuted to avoid abandonment. Appeals in such cases must be completed by the applicant but unless otherwise specifically ordered by the Commissioner will not be set for hearing until the secrecy order is removed.
(b) An interference will not be declared involving national applications under secrecy order. However, if an applicant whose application is under secrecy order seeks to provoke an interference with an issued patent, a notice of that fact will be placed in the file wrapper of the patent. (See � 1.607(d)).
(c) When the national application is found to be in condition for allowance except for the secrecy order the applicant and the agency which caused the secrecy order to be issued will be notified. This notice (which is not a notice of allowance under � 1.311 of this chapter) does not require response by the applicant and places the national application in a condition of suspension until the secrecy order is removed. When the secrecy order is removed the Patent and Trademark Office will issue a notice of allowance under �1.311 of this chapter, or take such other action as may then be warranted.
(d) International applications under secrecy order will not be mailed, delivered or otherwise transmitted to the international authorities or the applicant. International applications under secrecy order will be processed up to the point where, if it were not for the secrecy order, record and search copies would be transmitted to the international authorities or the applicant.
37 CFR 5.4. Petition for rescission of secrecy order.
(a) A petition for rescission or removal of a secrecy order may be filed by, or on behalf of, any principal affected thereby. Such petition may be in letter form, and it must be in duplicate. The petition must be accompanied by one copy of the application or an order for the same, unless a showing is made that such a copy has already been furnished to the department or agency which caused the secrecy order to be issued.
(b) The petition must recite any and all facts that purport to render the order ineffectual or futile if this is the basis of the petition. When prior publications or patents are alleged the petition must give complete data as to such publications or patents and should be accompanied by copies thereof.
(c) The petition must identify any contract between the Government and any of the principals, under which the subject matter of the application or any significant part thereof was developed, or to which the subject matter is otherwise related. If there is no such contract, the petition must so state.
(d) Unless based upon facts of public record, the petition must be verified.
37 CFR 5.5. Permit to disclose or modification of secrecy order.
(a) Consent to disclosure, or to the filing of an application abroad, as provided in 35 U.S. C. 182, shall be made by a "permit" or "modification" of the secrecy order.
(b) Petitions for a permit or modification must fully recite the reason or purpose for the proposed disclosure. Where any proposed disclosee is known to be cleared by a defense agency to receive classified information, adequate explanation of such clearance should be made in the petition including the name of the agency or department granting the clearance and the date and degree thereof. The petition must be filed in duplicate and be accompanied by one copy of the application or an order for the same, unless a showing is nude that such a copy has already been fiu-nished to the department or agency which caused the secrecy order to be issued.
(c) In a petition for modification of a secrecy order to permit filing abroad, all countries in which it is proposed to file must be made known, as well as all attorneys, agents and others to whom the material will be consigned prior to being lodged in the foreign patent office. The petition should include a statement vouching for the loyalty and integrity of the proposed disclosees and where their clearance status in this or the foreign country is known all details should be given.
(d) Consent to the disclosure of subject matter from one application under secrecy order may be deemed to be consent to the disclosure of common subject matter in other applications under secrecy order so long as not taken out of context in a manner disclosing material beyond the modification granted in the first application.
(e) The permit or modification may contain conditions and limitations.
37 CFR 5.6. General and group permits.
(a) Organizations requiring consent for disclosure of applications under secrecy order to persons or organizations in connection with repeated routine operation may petition for such consent in the form of a general permit. To be successful such petitions must ordinarily recite the security clearance status of the disclosees as sufficient for the highest classification of material that may be involved.
(b) Where identical disclosees and circumstances are involved, and consent is desired for the disclosure of each of a specific list of applications, the petitions may be joined.
37 CFR 5.7. Compensation.
Any request for compensation as provided in 35 U. S.C. 183 must not be made to the Patent and Trademark Office but should be made directly to the department or agency which caused the secrecy order to be issued. Upon written request persons having a right to such information will be informed as to the department or agency which caused the secrecy order to be issued.
37 CFR 5.8. Appeal to Secretary.
Appeal to the Secretary of Commerce, as provided by 35 U.S.C. 181, from a secrecy order cannot be taken until after a petition for rescission of the secrecy order has been made and denied. Appeal must be taken within 60 days from the date of the denial, and the party appealing, as well as the department or agency which caused the order to be issued will be notified of the time and place of hearing. The appeal will be heard and decided by the Secretary or such officer or officers as he may designate.
SECRECY ORDER TYPES
Three types of Secrecy Orders, each of a different scope, are issued as follows:
(1) Secrecy Order and Permit for Foreign Filing in Certain Countries - to be used for those patent applications that contain technical data whose export is controlled by the guidelines contained in DoD Directive 5230.25 dated November 6, 1984 which reviews export control under 10 U. S.C. 140(c) and the Militarily Critical Technology List (MCTL).
(2) Secrecy Order and Permit for Disclosing Classified Information - to be used for those patent applications which contain technical data that is properly classified or classifiable (no Government interest) under a security guideline where the patent application owner has a current DoD Security Agreement DD Form 441. If the application is classifiable, this secrecy order allows disclosure of the technical information as if it were classified as prescribed in the Industrial Security Manual (ISM).
(3) Secrecy Order - to be used for those patent applications that contain technical data properly classifiable under a security guideline where the patent application owner does not have a DoD Security Agreement. The order prevents disclosure of the subject matter to anyone without an express written consent from the Commissioner. However, quite often this type of secrecy order includes a permit "Permit A" which relaxes the disclosure restrictions as set forth in the permit.
The first Secrecy Order is intended to permit the widest utilization of the technical data in the patent application while still controlling any publication or disclosure which would result in an unlawful exportation. This type of Secrecy Order is based on the applicable export controls in either the Commodity Control List (CCL) or the Munitions Lists of the International Traffic in Arms Regulation (ITAR), and identifies the countries where corresponding patent applications may be filed. Countries with which the United States has reciprocal security agreements are: Australia, Belgium, Canada, Denmark, France, Germany, Greece, Italy, Japan, Luxembourg, Netherlands, Norway, Portugal, Spain, Sweden, Turkey and the United Kingdom. Please note that applications subject to a secrecy order cannot be filed directly with the European Patent Office since no reciprocal security agreement with this organization exists. Applications must be filed in the individual EPO member countries identified above.
The intent of the second Secrecy Order is to treat classified technical data presented as a patent application in the same manner as any other classified material. Accordingly, this Secrecy Order will include a notification of the classification level of the technical data in the application.
The third type of Secrecy Order is used where the other types of Orders do not apply, including Orders issued by direction of agencies other than the Department of Defense.
A Secrecy Order should not be construed in any way to mean that the Government has adopted or contemplates adoption of the alleged invention disclosed in an application; nor is it any indication of the value of such invention.
RELATED SUBJECT MATTER
The Secrecy Orders apply to the subject matter of the invention, not just to the patent application itself. Thus, the Secrecy Order restricts disclosure or publication of the invention in any form. Furthermore, other patent applications already filed or later filed which contain any significant part of the subject matter of the application also fall within the scope of the Order and must be brought to the attention of Licensing & Review if such applications are not already under Secrecy Order by the Commissioner.
The effects of a Secrecy Order are detailed in the notifying letter and include restrictions on disclosure of the invention and delay of any patent grant until the Order is rescinded.
When the Secrecy Order issues, the law specifies that the subject matter or any material information relevant to the application, including unpublished details of the invention, shall not be published or disclosed to any person not aware of the invention prior to the date of the Order, including any employee of the principals except as permitted by the Secrecy Order. The law also requires that all information material to the subject matter of the application be kept in confidence, unless written permission to disclose is first obtained from the Commissioner of Patents and Trademarks except as provided by the Secrecy Order. Therefore, all correspondence to be filed in an application which is subject to a secrecy order and which is directly related to the subject matter covered by the secrecy order must be transmitted to the Office in a manner which would preclude disclosure to unauthorized individuals and addressed as set forth in 37 CFR 5.33. Use of facsimile transmission is not permitted (37 CFR 1.6(d)(6)).
Subject matter under Secrecy Order must be safeguarded under conditions that will provide adequate protection and prevent access by unauthorized persons.
When applicants desire to change the Power of Attorney in an application under Secrecy Order, the name, date of birth and Social Security number of the new attorney(s) should be included in the change notice so that Licensing and Review may conduct the necessary access security clearance checks.
Applicants should also ensure that the correspondence address (37 CFR 1.33) of any application under Secrecy Order represents a location suitable for the receipt of security information.
If the 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 If the Secrecy Order remains in effect at the end of the time limit under PCT Rule 22.3, the international application will be considered 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). If the United States of America has been designated, however, it is possible to save the U.S. filing date, by fulfilling the requirements of 35 U.S.C. 371(c) prior to the withdrawal.
CHANGES IN SECRECY ORDERS
Applicants may petition for rescission or modification of the Secrecy Order. For example, if the applicant believes that certain existing facts or circumstances would render the Secrecy Order ineffectual, he or she may informally contact the sponsoring agency to discuss these facts or formally petition the Commissioner to rescind the Order. The applicant may also petition the Commissioner for a permit to disclose the invention to another or to modify the Secrecy Order stating fully the reason or purpose for disclosure or modification. An example of such a situation would be a request to file the application in a foreign country. The requirements for petitions are described in 37 CFR 5.4 and 5.5. The law also provides that if an appeal is necessary, it may be taken to the Secretary of Commerce under the provision of 37 CFR 5.8. Any petition or appeal should be addressed to the Assistant Comniissioner for Patents, Attention: Licensing and Review, Washington, D.C. 20231.
IMPROPER OR INADVERTENT DISCLOSURE
If, prior to or after the issuance of the Secrecy Order, any significant part of the subject matter or material information relevant to the application has been or is revealed to any U.S. citizen in the United States, the principals must promptly inform such person of the Secrecy Order and the penalties for improper disclosure. If such part of the subject matter was or is disclosed to any person in a foreign country or foreign national in the U.S., the principals must not inform such person of the Secrecy Order, but instead must promptly funiish to the Assistant Comniissioner for Patents, Patent and Trademark Office, Attention: Licensing and Review Washington, D.C. 20231 the following information to the extent not already furnished: date of disclosure; name and address of the disclosee; identification of such subject matter; and any authorization by a U.S. government agency to export such subject matter. If the subject matter is included in any foreign patent application or patent, this should be identified.
Under the provision of 35 U. S. C. 181, a Secrecy Order remains in effect for a period of 1 year from its date of issuance. A Secrecy Order may be renewed for additional periods of not more than 1 year upon notice by a government agency that the national interest so requires. The applicant is notified of any such renewal.
The expiration of or failure to renew a Secrecy Order does not lessen in any way the responsibility of the principals for the security of the subject matter if it is subject to the provisions of Executive Order 12356 or the Atomic Energy Act of 1954, as amended, 42 U.S.C. 141 et. seq. and 42 U. S.C. 2181 et. seq. or other applicable law unless the principals have been expressly notified that the subject patent application has been declassified by the proper authorities and the security markings have been authorized to be canceled or removed.
Handling of Applications and Other Papers Bearing Security Markings
Under Executive Order for National Security Information (Executive Order 12356, 47 Federal Register, Number 66 page 14875 et seq., April 12, 1982) standards are prescribed for the marking, handling, and care of official information which requires safeguarding in the interest of security.
Papers marked as prescribed in the Executive Order, and showing that such marking is applied by, or at the direction of, a government agency, are accepted in patent applications. All applications or papers in the Patent and Trademark Office bearing words such as "Secret" or "Confidential" must be promptly referred to Group 220 for clarification or security treatment. Under no circumstances can any such application, drawing, exhibit or other paper be placed in public records, such as the patented files, until all security markings have been considered and declassified or otherwise explained.
Authorized security markings may be placed on the patent application drawings when filed provided that such markings are outside the illustrations and that they are removed when the material is declassified, 37 CFR 1.84(v).
Examination of Secrecy Order Cases [R - 2]
All applications in which a Secrecy Order has been imposed are examined in Group 220. If the Order is imposed subsequent to the docketing of an application in another group, the application will be transferred to Group 220.
Secrecy Order cases are examined for patentability as in other cases, but may not be passed to issue; nor will an interference be declared where one or more of the conflicting cases is classified or under Secrecy Order. See MPEP � 2309.06. When requested to do so, by examiners outside Group 220, examiners in Group 220 will conduct the interference searches of those interference files containing briefcards from classified or Secrecy Order cases.
In case of a final rejection, while such action must be properly responded to, and an appeal, if filed, must be completed by the applicant to prevent abandonment such appeal will not be set for hearing by the Board of Patent Appeals and Interference until the Secrecy Order is removed, unless specifically ordered by the Commissioner.
When a Secrecy Order case is in condition for allowance, a notice of allowability (Form D - 10) is issued, thus closing the prosecution. Any amendments received thereafter are not entered or responded to until such time as the Secrecy Order is rescinded. At such time, amendments which are free from objection will be entered; otherwise they are denied entry.
Due to the additional administrative burdens associated with handling papers in Secrecy Order cases, the full statutory period for response will ordinarily be set for all Office actions issued on such cases.
Sometimes applications bearing security markings but no Secrecy Order come up for examination. In this case, the examiner should require the applicant to seek imposition of a Secrecy Order or authority to cancel the markings. This should preferably be done with the first action and, in any event, prior to final disposition of the application.