The Patent Twilight Zone: Keeping Significant Innovations Secret

On April 20, 2012, the Patent and Trademark Office published a Notice in the Federal Register titled 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.  It almost boggles the mind, but this Federal Register Notice explains that the USPTO is undertaking a study to determine the feasibility of requiring economically significant patents to be kept under lock and key.  Yes, pursuant to a request from our brilliant members of Congress the USPTO is going to study whether economically significant patents should be placed under a secrecy order, thereby scuttling any opportunity for the innovation to be patented until such time as it is no longer economically significant.

Yes, it seems that there are some in Congress that would prefer for truly important innovations to be unpatentable. James Madison must be rolling over in his grave! It is bad enough that any of the brilliant minds in Congress think that significant innovations ought not be patented, but Congress is actually contemplating the possibility of ordering economically significant innovations to be maintained in secret so no one can learn of them?

Those wishing to submit comments for the USPTO to consider as part of this nonsensical study need to submit comments on or before June 19, 2012, so the comment period is over.  I had wanted to write about this earlier, but life got in the way and then like a bad dream I put it out of my head, choosing to believe as a result of stress and being overly emotional my memory had to be deceiving me.  Surely Congress wouldn’t consider scuttling those innovations that are the most valuable. That would be a bridge to far for even Members of Congress.

Sadly, I fell prey to over-estimating Congress.  Yes, I know.  No one has ever made a mistake in under estimating the collective intelligence of a body that struggles to exhibit even a modicum of common sense.  It won’t happen again.  Mea culpa.  I apologize.

Twilight Zone — Patent Style

As you contemplate that unfortunate reality your eyes will begin to get heavy, you will start to see the screen wiggle at first and then start to fade to black as a pinwheel of black and white lures you in… three… two… one… You are about to begin a journey through space and time, into another dimension.  On this odyssey you will encounter a wondrous land whose boundaries are ill defined, yet sadly predictable.  The vastness of this timeless infinity forms a middle ground between bewilderment and reality, superstition and control, and repugnance and rapture.   It lies at the heart of all of your worst fears, but holds the key to the doorway of eternal understanding.  You are about to enter the Twilight Zone — the patent edition!

Shrouded by the cloak of the Twilight Zone, let’s be frank.  This study is nothing more than a waste of our taxpayer dollars.  The fact that it is taking place at a time when we borrow 42% of every dollar we spend just adds insult to injury.  We have a $16 trillion national debt and annual budget deficits north of $1 trillion as far as the eye can see and we are spending precious USPTO recourses studying whether there are some inventions that are just too important and innovative to be known by mere mortals?  Ridiculous doesn’t even begin to express how much of a farce this endeavor is.  This study is insulting and exemplifies everything wrong with government.  The federal government has become stupid and wasteful.  Our leaders are not good stewards, nor are they appropriate fiduciaries of our money.

Where is this Coming From?

The Commerce, Justice, Science, and Related Agencies Subcommittee issued a Report on the 2012 Appropriations Bill on July 20, 2011, which in relevant part 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.

It would seem that the concern raised is not outside the mainstream and may actually be a good idea, or at least something that demonstrates some basic, functional knowledge of our patent system.  Only over the last 12 to 13 years have patent applications been published in the United States prior to the patent issuing.  When this change occurred it was considered a major step forward toward harmonization of U.S. patent laws because virtually everyone else publishes applications 18 months after the priority date. So now the default in the U.S. is that a patent application will publish at the 18 month mark.  But as the Patent Office has increasingly struggled to keep up with the high volume of patent applications and the backlog of patent applications peaked at 1.2 million, it can take many years to obtain a patent.

In fact, according to the latest USPTO estimates out in May 2012, this is how long it takes for various applications to go from filing to completion:

  • 85.3 months average from filing to decision by the Board
  • 78.8 months average from filing to completion for a Continuation
  • 79.7 months average from filing to completion for a Divisional
  • 62.2 months average from filing to completion if at least 1 RCE is filed

If you need to go to appeal it will take an average of over 7 years.  This is significant because there are some Art Units within the Patent Office that simply refuse to issue patents and are openly not doing their job in blatant disregard for the law.  Virtually all of the patents issued in those Art Units are mandated to be issued by Board decision.

The RCE average is particularly relevant because in many, if not most cases or even nearly all cases, at least 1 RCE is absolutely necessary, although thanks to an After Final Pilot program that could significantly change moving forward.  Still, applicants should budget for at least 1 RCE, which also adds quite a bit to the average pendency.

Thus, if Congress were interested in studying whether we should be publishing patent applications at 18 months or keeping them secret until issuance, or secret forever if a patent never issues, then I would be all for it.  That would be a useful study.  Many in the industry, including myself, think the backlog issue would solve itself if patent applications were not published. Without publication major corporations would demand Congress fix the backlog problem because not knowing whether there is a patent that could pop up and ruin your business plan for 5 to 7 years is not an acceptable risk.

But to think that Congress actually came up with a good point relative to the patent system is to fail to understand the ineptitude of the body at large.

About the Scope of the Requested Comments

Before we back slap and congratulate Congress let’s take a look at what the study is actually focused on.  According to the Federal Register Notice:

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.

(emphasis added).

If implemented not only would economically significant innovations be prevented from being patented, but incentive to pursue the most value innovations would be lost.  Furthermore, use of the innovation outside the United States would be severely curtailed if not completely prevented because  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.  Further, even if the innovation was used in the United States it could be copied and used anywhere by anyone.  Therefore, this would strip all incentive to innovate economically significant innovations because if used they could be copied by others who didn’t have to spend the time, money or energy to develop in the first place.  Talk about a free-rider problem!  This would make economically significant innovations unattractive.  They wouldn’t be pursued, which certainly won’t benefit the U.S economy.

The first of 17 specific questions asked by the USPTO was this:

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?

ANSWER: Absolutely not! This is a ridiculous idea that will strip incentive from our patent system and cause those innovations that are most useful to society to not be pursued.

The answer to the remaining 16 questions should be: “Which part of ‘no’ is confusing.  This question is irrelevant because no one in their right mind would ever set up such a regime in the first place!”

Conclusion

Honestly, sometimes I don’t recognize America any more.  I wish I could snap you out of this “Patent Twilight Zone,” but I cannot.  This is the new reality.  We have to so vigilantly watch those who are supposed to be working of us that it boggles the mind.  If we were shareholders and the federal government were the corporation we owned we would summarily dismiss Congress for cause.  This can’t be what the Founders thought would happen.  Maybe it has always been like this and we are just now in the 24/7 media and Internet Age getting a good glimpse.  I guess this is what was meant by the old saying about never wanting to see how two things are made — sausage and law.  But still, there has to be a better way.

Before coming back to reality perhaps I will make a wish.  I with that the common sense, real world approach of the Kappos Administration stops this train before it runs off the rails and into the cavernous abyss.

You may now return to your otherwise scheduled daily lives, but sadly none of out will likely be able to forget this particular Twilight Zone episode anytime soon.

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Join the Discussion

43 comments so far.

  • [Avatar for Randy Landreneau]
    Randy Landreneau
    July 17, 2012 12:03 pm

    Gene – The Federal Register notice states that a reason for the proposal is “…a potential risk of loss of competitive advantage during the period of time between publication and patent grant.” So, the solution for the US Patent holder is to not allow him to get a patent or do anything with the invention? The only logical conclusion here is that the motive for the proposal is NOT what is stated. Logic dictates that this proposal is an effort for politically powerful industries to stop game-changing innovation. The tactic used here in 1) trying to tie a real problem (time between publication and patent grant) to a false solution that has another motive, and 2) depending on an uninformed public not to notice, is the same M.O. as what was used to pass The America Invents Act. Please let us know if this thing gathers any steam.

  • [Avatar for patent litigation]
    patent litigation
    July 9, 2012 08:15 pm

    This seems to me to be just another example of the current administration’s modus operandi, which is: when in doubt, keep it secret from the public. I’m not comfortable with a government that views secrecy as its default setting, whether in regard to patent law or to anything else.
    http://www.generalpatent.com/blog

  • [Avatar for Roland]
    Roland
    July 9, 2012 05:24 pm

    I agree that Randy @31 seems to have put his finger on it. However, I’m not sure if the best example is a significant new energy source. As others have intimated, we should perhaps look towards the darker side of patent use and abuse and look for angles that would “benefit” not necessarily the inventor but their potential competitors – I’m thinking along the lines of the “smart device wars” and software features such as Apple’s “slide-to-unlock”.

    I also like the idea that some how at time of patent application, it can be determined that an individual patent will be “economically significant”, particularly as a major problem the USPTO seems to have, is the timely assessment of patent applications. A look back at the Sewing machine wars, also shows how difficult it would be to identify which patents were significant prior to Singer’s working machine and the resolution of the wars which enabled the creation of a significant market in sewing machines.

    I’m also intrigued on Congress’es thinking as to how an economically significant patent can be effectively be kept secret and enforced; yet be used to deliver economically significant levels of trade. Ie. just how would a US manufacturing company sell a high-tech consumer product (eg. smartphone) globally etc. etc. whilst at the same time protect their home market from “johnny foreigner” either importing ‘infringing’ products or filing their own similar patents in their own country …

  • [Avatar for MaxDrei]
    MaxDrei
    July 7, 2012 06:44 am

    Very sharp observation Gene, which set me thinking that one, generally, can’t have one’s cake and eat it too.

    One can have the German Torte, enforceable rights 3 months after filing. But those rights are mere registered patent rights, unexamined for patentability.

    Or one can have the UK’s Victoria Sponge: examined issued enforceable patent rights after 10 months. But the PTO has not been able to ascertain whether some other inventor filed the day before you, for the same subject matter.

    Or you can have an EPO Harlequin Cake, fully tested for patentability, including the question whether anybody else beat your filing date: fully examined rights to enjoin 2 years after your filing date.

    Or you can have The Presumption of Validity, under which issued claims enjoin unless clear and convincing evidence of their invalidity is accepted by the CAFC.

    But with that last option, the snag is that the PTO is deluged by claims that would have no hope of surviving CAFC scrutiny but, until then, will do very nicely for intimidatory purposes. Everybody has seen how Clint Eastwood invites the punk to try his luck against the loaded Colt. Just like an issued claim, isn’t it?

    And hardly surprising then, that the USPTO hesitates, thinks long and hard, before loading the Colt. We wouldn’t want it any other way, would we?

  • [Avatar for Gene Quinn]
    Gene Quinn
    July 6, 2012 11:53 pm

    Stan-

    I am not a fan of publication of patent applications when it takes as long as it does to get a patent issued. 18 month publication makes sense when the average pendency is 18 months, not when it is as high as it is. For some of the most commercially relevant innovations that require hearing at the Board average pendency is over 7 years. That is over 5 and a half years on average without patent protection after publication. That is a crime if you ask me.

    -Gene

  • [Avatar for Stan E. Delo]
    Stan E. Delo
    July 5, 2012 08:11 pm

    Gene-

    What about just turning this whole proposal on it’s ear by just mandating non-publication if the *invention* is selected as possibly being *economically significant*, whatever that is supposed to mean! In my case I had to abandon any chance of filing foreign to the US to be able to elect for non-publication of my patent application. If it doesn’t get published before the patent issues, won’t they be so surprised to find out what is being *suppressed*.

    It would need a promise from Congress to not keep the inventions under lock and key in perpetuity, which is probably the right thing for them to do in my opinion. Leaving it to some Senate committee to decide *later* which inventions would be released is seemingly not according to Hoyle, and probably unconstitutional even according to our out of control Supreme Court.

  • [Avatar for patent search]
    patent search
    July 5, 2012 03:33 am

    Well Randy, even if your clients are going to invent a brand “new energy source”, and you’re going to provide them with a plastic mock-up, I doubt they are going to invent something like the blue light emitting diode. It’s that sort of thing I see as economically significant. All the tea in China, all the maufacturing capacity in Asia, to read DVD’s, wont help you steal a consumer products march on the USA, if you don’t know how to make the blue diode on which the entire industry is built.

  • [Avatar for MaxDrei]
    MaxDrei
    July 5, 2012 02:51 am

    Stan, yes, I daresay I have no idea how much 500 million buys. But, credulously, I still refuse to believe that these “national interest” proposals are intended to give Big Oil a chance to see all new patent applications arriving at the USPTO, to identify those they dislike, and filter them out.

    But you’ve set me thinking. I suppose Dave could set up an American National Interest Committee, that does review all incoming patent applications, as they arrive at the USPTO. How would seats on that committee be allocated? Recall that what’s good for General Motors is good for the USA ie in the National Interest. That sort of thing. And, if Dave needs more money, to pay for more employees, he could perhaps auction those seats off, to the highest bidder. Under classical economics theory, (only joking), that the one who makes the highest bid values the National Interest the highest, and therefore (it’s obvious to me now) the American National Interest is best served by having Big Oil dominate that committee.

    But, you know, I suspect a seat on that Committee would actually be worth more to IBM and J&J than to Big Oil. To have privileged sight of all patent specifications on filing, 18 months before your main competitors see them; how much is that worth?

    Is that the point that I’m missing? Thanks to you, I see it now.

  • [Avatar for Stan E. Delo]
    Stan E. Delo
    July 4, 2012 04:06 pm

    You seem to miss the point completely Max. There are probably dozens of Congress folks that have large big oil donations in their back pockets. The main proponent of the America Invents Act was/is Senator Patrick Leahy, who hails from Vermont, the IBM state. As near as I can figure, during the patent reform efforts over several years, large corporations spent over $500,000,000 lobbying to get *patent reform* enacted.

  • [Avatar for MaxDrei]
    MaxDrei
    July 4, 2012 03:24 pm

    Stan, I think it is the Govt that gets to see your patent applications, and not the oil industry.

    Or are you saying that the oil industry owns the Governemt, sees all newly filed US pat applns, and instructs Govt which patent applications to put under wraps?

    It’s just that I thought it was the Chinese, not Big Oil, that now owns the US Govt.

  • [Avatar for Stan E. Delo]
    Stan E. Delo
    July 4, 2012 11:40 am

    Randy-

    You put your finger on exactly what is making me so nervous about this turn of events. Who exactly is to decide which inventions are to be suppressed, and more importantly why? Even more disturbing is that the suppression might very well be permanent if I understand it correctly. Using your energy example, the development of a fusion energy invention would probably be a very real threat to the oil industry, so to expect them to sit still and let it happen if they could prevent it is naive in the extreme. Where is the bright line as regards economic security? There doesn’t seem to be any.

  • [Avatar for MaxDrei]
    MaxDrei
    July 4, 2012 11:19 am

    Well Randy, even if your clients are going to invent a brand “new energy source”, and you’re going to provide them with a plastic mock-up, I doubt they are going to invent something like the blue light emitting diode. It’s that sort of thing I see as economically significant. All the tea in China, all the maufacturing capacity in Asia, to read DVD’s, wont help you steal a consumer products march on the USA, if you don’t know how to make the blue diode on which the entire industry is built.

    But wait. The blue diode was invented in Japan, wasn’t it. wonder what inventions the Chinese have got brewing today. Anybody know?

  • [Avatar for Randy Landreneau]
    Randy Landreneau
    July 4, 2012 11:06 am

    Let’s clarify what the proposed legislation is really about and why we should all be very concerned. This isn’t about making some new weapon secret so some rogue state can’t get it – that’s already covered by current Secrecy Orders. This is about “national economic security.” What does that mean? Just about any major industry could be upset by a significant, disruptive invention. So, the proposed legislation would allow industries with enough political power to stop the introduction of better technologies that would compete with them. The best example is a significant new energy source – it’s bound to happen sooner or later. This is the natural progression to greater ability to politically stop innnovative competition that really started rolling with The America Invents Act. We should take serious notice of this effort and do everything possible to derail this train.

  • [Avatar for MaxDrei]
    MaxDrei
    July 4, 2012 03:14 am

    Let me put it this way Stan:

    For 2500 years, the Han Chinese have mistakenly believed themselves to be a pure race. That’s never going to change. For them, all other humans are genetically, inherently inferior. That belief ain’t going to change either. You do know what is entailed in kow-towing, don’t you? Not even in South Africa were the Blacks required to do that.

    The British refused to kow-tow. There followed the Opium Wars, which the Britsh won only because they deployed vastly superior technology.

    The Chinese have a very long memory. They have not forgotten. Nor should we.

    PS. Don’t change the subject by telling me how immoral the British were, back then. I know. But it’s irrelevant to our present discussion about keeping quiet about new technology which is so important that it’s a matter of defence interest.

  • [Avatar for MaxDrei]
    MaxDrei
    July 4, 2012 02:30 am

    Stan, thinking ahead, and learning from the past, I am wondering how long it will be, before we are all required to speak Mandarin.

  • [Avatar for Stan E. Delo]
    Stan E. Delo
    July 3, 2012 11:09 pm

    This is somewhat like litigation discovery.

  • [Avatar for Stan E. Delo]
    Stan E. Delo
    July 3, 2012 11:00 pm

    The motive goes to why you are being so cavalier with My US patent rights. They are not yours, so please do not advocate for abdication of my patent rights here on the other side of the pond. Do what is possible in England or Germany, but please spare us the lectures about the world according to Max Drei, whoever you happen to be. I am guessing a Brit who happens to speak Deutches very well, but that is just my opinion after all is said and done.

    Have you ever watched a Spitfire Mk 9 or 13 take off? The Hurricanes actually turned the tide, or we might all haben Deutsch gesprochen right about now. Do you think that would have been a good thing to happen?

  • [Avatar for Stan E. Delo]
    Stan E. Delo
    July 3, 2012 05:55 pm

    As a good friend of mine who is a patent agent and prolific inventor used to say once in a while- “I may be paranoid, but that doesn’t mean they aren’t out to get me!”

  • [Avatar for MaxDrei]
    MaxDrei
    July 3, 2012 03:04 am

    Stan, as to your #23, I don’t get it (me being so naive). What “motive”?

    But wait a minute. Could it be that what you and Blind are thinking is that the national interest, to shield American blue skies research results from premature leakage, is just a front, which fools only the gullible, and that the real “motive” that explains this request from Congress to Dave is the vital and over-riding world-wide imperative (held also by me, you suppose), to squash the American garage inventor, by all means possible, even to the extent of selectively suppressing his patent applications? After you have digested the content of the book “When China Rules the World” (by Martin Jacques) let’s talk some more, about who is naive.

    I know that, for garage inventors everywhere, looking at the world through their prism, it seems as if the whole world is out to get them. In that predicament though, they don’t have an exclusive.

  • [Avatar for MaxDrei]
    MaxDrei
    July 3, 2012 02:42 am

    naive, naïve [n???i?v na??i?v], naïf
    adj
    1.
    a. having or expressing innocence and credulity; ingenuous
    b. (as collective noun; preceded by the) only the naive believed him
    2. artless or unsophisticated
    3. lacking developed powers of analysis, reasoning, or criticism a naive argument
    4. another word for primitive [5]

    Dear Blind, do me a favour will you. Rate the 4 meanings above, in the order in which you think they fit to my utterances above. What is it that frightens you so much: that I am credulous, unsophisticated, or just a useless analyst?

    Dear Stan, Yes (and you would recognise their names).

  • [Avatar for Stan E. Delo]
    Stan E. Delo
    July 2, 2012 09:49 pm

    This goes towards motive.

  • [Avatar for Stan E. Delo]
    Stan E. Delo
    July 2, 2012 09:46 pm

    Max-

    Do you currently happen to have any US clients? An inquiring mind would really like to know.

  • [Avatar for Stan E. Delo]
    Stan E. Delo
    July 2, 2012 07:28 pm

    Oops!
    They actually start talking about the Twilight Zone at about 8 minutes into the 21 minute video. Sorry about that.

  • [Avatar for Stan E. Delo]
    Stan E. Delo
    July 2, 2012 06:54 pm

    At 21 minutes into the video, they start talking about the yet to be produced Twilight Zone? I haven’t ever seem this interview before. Rod was a very clever man.

  • [Avatar for Stan E. Delo]
    Stan E. Delo
    July 2, 2012 06:43 pm

    An interesting interview done by a young Mike Wallace with Rod Serling.
    http://video.pbs.org/video/2251283302/

  • [Avatar for Stan E. Delo]
    Stan E. Delo
    July 2, 2012 06:00 pm

    BD-

    Next up is Tangential Tangerine, which is good when the logic seems to be getting a bit circular. Lots of vitamin C and B-12 as well, with just a hint of bitter-root to make things a bit edgy.

  • [Avatar for Blind Dogma]
    Blind Dogma
    July 2, 2012 05:41 pm

    MaxDrei,

    For someone who professes to have as much experience as you do, your naiveté is frightening (and not in a good way).

    Stan, quarterly results are in: Kool Aid Sales are at record highs! (the secret inside track at Patently-O is making money as if we had a printing machine). Your efforts will surely be reflected in your bonus!

  • [Avatar for MaxDrei]
    MaxDrei
    July 2, 2012 05:35 pm

    Stan, anon, I’m having difficulty reconciling subject matter (A) that the US Govt would wish to keep from the Chinese with subject matter (B) reduced to practice in a garage. I would think the real world present day concern is all about A and not fantasy B (say, an A-bomb in a suitcase), and that in the real world A only gets invented in universities or corporate research or Govt research institutions. I would think this is all about widening the area of concern about leakage beyond pure defence, to include blue skies stuff in other fields of application of pure science.

    Technology in universities, corporate labs, or Govt labs, that acquires the cachet of a Secrecy Order would (somehow or other) attract more funds for more urgent research, I would think, at least in China, if not in the USA or Europe.

    Or would you say that Congress has no need to worry, and so should stop promenading on matters about which it knows virtually nothing.

  • [Avatar for Stan E. Delo]
    Stan E. Delo
    July 2, 2012 05:27 pm

    At the end of #13

    not a good idea right about now.

  • [Avatar for Stan E. Delo]
    Stan E. Delo
    July 2, 2012 05:02 pm

    Anon-

    In the case of a frozen application due to national security issues, if the inventor or attorney revealed the patent application to anyone besides the PTO after it had been frozen, they might very well find themselves going to a Federal prison, if I am not mistaken.

    I think I will go pour myself a tall glass of Jaded Jasmine kewl-aid.

  • [Avatar for Stan E. Delo]
    Stan E. Delo
    July 2, 2012 04:26 pm

    Max-

    In the inflatable boat patent I found,(Think Zodiac) the US Navy was the assignee, so I am presuming they compensated the inventors while they were using the technology. As I seem to recall, they released the application in the late 40’s. As Gene mentions the applications are just frozen until released. That makes a lot of sense actually, as during examination many eyes would be looking at it with potentials for leaks.

    That may seem paranoid in some cases, but imagine a patent application for a suitcase sized thermonuclear device. Not a good thing to be publishing on the Internet, nicht whar? In the proposed case, who would decide to release it? A Senate or House committee? In most past cases it is the Pentagon or the CIA perhaps that decides to freeze the application, but nobody can know for sure I suppose.

    In the present proposal, they seem to want to freeze inventions permanently, or more likely Congress will just forget to release them, given their short attention span. I think Gene is right that David will discretely tell Congress that this is a very bad idea, and fortunately David seems to have developed a lot of credibility with Congress. Doing what they are suggesting would be somewhat like opening Pandora’s Box, which is probably not a good idea right about.

  • [Avatar for Anon]
    Anon
    July 2, 2012 04:20 pm

    MaxDrei, I am confused by your cmment: “And what better evidence could you wish for, to convince investors of the potential within the invention?

    Wouldn’t there be a small problem of even convincing potential investors of anything, since with a security order in place you would not be able to tell the investors anything?

  • [Avatar for MaxDrei]
    MaxDrei
    July 2, 2012 04:01 pm

    Well thanks Gene. You write:

    “…inventors caught by a secrecy order will go decades without their patent applications moving forward”

    That might be the way it always has been, but I don’t see why it must always be like that. Defence contractors are quite happy for the app to stay unexamined, while sales to DOD continue. But suppose, outside the defence contractor world, in ordinary EE or biotech, the applicant caught by a Secrecy Order agitates for early issue, and points out that the subject matter of the patent application has reached the public domain. In the national interest, the Secrecy Order would immediately be revoked, wouldn’t it?

    Imagine the burden for the responsible Government employee: should I impose a Secrecy Order? Or not? Dunno. Perhaps the best guarantee that this will not come to pass is all-round reticence amongst government employees to impose a Secrecy Order in the first place.

    Mind you, once it is imposed, it might be hard to find a government employee ballsy enough to rescind it.

  • [Avatar for Gene Quinn]
    Gene Quinn
    July 2, 2012 03:12 pm

    Randy-

    We certainly seem to be heading for a cliff, don’t we?

    -Gene

  • [Avatar for Gene Quinn]
    Gene Quinn
    July 2, 2012 03:11 pm

    EG-

    I have no idea about what this would mean for TRIPS, but I suspect the USPTO to kill the suggestion politely, although I have no inside information on the matter.

    I suspect it comes from some potentially well meaning members of Congress who just don’t have a clue about innovation or the patent process, or how inventors caught by a secrecy order will go decades without their patent applications moving forward.

    -Gene

  • [Avatar for Gene Quinn]
    Gene Quinn
    July 2, 2012 03:09 pm

    MaxDrei-

    When a secrecy order is imposed it is not prosecuted at all. It just stalls. There have been cases where secrecy orders were in place for many decades. Not long ago a patent was finally issued after 70+ years. The grand children just wanted the world to know what their grandfather had done, but which was deemed to be too important during the World War II era to be disclosed.

    There seems to be some abuse of the secrecy order. How or why something could remain a matter of national security for 3 or 4 generations is curious.

    So to answer your question, the imposition of a secrecy order is absolutely NOT in the best interest of the inventor. Many inventors in this space will spend their entire life getting no where with their life work. I hear from them periodically because they are exasperated by the non-responsiveness of the government.

    -Gene

  • [Avatar for MaxDrei]
    MaxDrei
    July 2, 2012 02:37 pm

    When a Secrecy Order is imposed on a US patent application, is not some right to compensation the consequence (like in the UK). When an application is under a Secrecy Order, can it not be prosecuted with all despatch, up to a Notice of Allowance? Why should it not be? Is there any reason why the A publication in a patent application subject to a secrecy Order cannot be subsumed within the B publication ie the granted patent? If the compensation clock is running, why would US Gov block issue of the patent one day longer than the national interest requires?

    Summing up, is not the imposition of such a Secrecy Order the best thing that could happen to an inventor? Expedited prosecution with no fee to pay. And what better evidence could you wish for, to convince investors of the potential within the invention?

    US industry might not read early alert A publications 18 months after the earliest priority date (for fear of willful infringement) but the Chinese surely do read those valuable A publications. Yummee yummee, they say to themselves. I can well understand a desire to deprive them of this particular reading matter.

  • [Avatar for Stan E. Delo]
    Stan E. Delo
    July 2, 2012 02:15 pm

    Truly amazing that they would even Think of doing something like this! Especially right in middle of an economic meltdown, that cries out for innovative solutions to the huge mess we are in. Maybe they think they should have the right to swipe patent rights for their exclusive use, and then deny the possibility of the inventor to be able to get a patent? Which class of patents is next?

    I can understand putting patent rights on hold for a little while like they did during WWII for technology that might harm the national security, like atom bombs or like the inflatable boat invention that I found during a patent search. Even at that though, once the threat factor went away, they allowed the inventor to retain their patent rights.

    The Twilight Zone is a very apt analogy.

  • [Avatar for MaxDrei]
    MaxDrei
    July 2, 2012 12:08 pm

    Are you all saying that the 1960 NATO Agreement (see Wikipedia Link above, and the various pdf’s there, which you can read if you are interested) is an abomination that should never have been put into effect? It’s still running perfectly well, isn’t it?

    Do none of you have any defence contractor as client? (If you did, you would be able to ask them how they use the NATO Agreement).

    Where does “defence interest” end yet “national interest” not? Isn’t the idea just to push the envelope from strict “defence” to some wider definition of the national interest? What’s so iniquitous about that? I should have thought you would all be in favour.

  • [Avatar for Randy Landreneau]
    Randy Landreneau
    July 2, 2012 10:09 am

    Gene – From above: “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.” This is right out of Atlas Shrugged. We must stop the locomotive that has been started by The America Invents Act.

  • [Avatar for EG]
    EG
    July 2, 2012 08:25 am

    Gene,

    This is an absolutely horrible idea. Does Congress believe that technology development grows on trees? Congress has already mucked up encouraging technology development enough with the AIA (The Abominable Inane Act) and now this. The fact that the technology may be “economically significant” is even more reason why patent protection for it should be be available (not precluded) so that technology’s development is encouraged. Does Congress really believe that private enterpirse will develop such “economically significant” technologies wiithout hope of IP protection? How will precluding the patenting of such “economically significant” square with our treaty obligations under TRIPS?

  • [Avatar for patent leather]
    patent leather
    July 1, 2012 08:20 pm

    I assume the USPTO is laughing about this one just as much as we are, but they are just responding to a request from Congress and of course, the USPTO does not want to bite that hand that feeds them.

    It seems Congress is confused, as parts of the register notice seem to imply this would be for the benefit of the patent owner: “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.” But as you state, the secrecy order would prevent it from being patented and is ordered by the government NOT at the option of the patentee. In fact, the pendency problem is not really a problem anymore because an applicant could file an application with a nonpub request and a petition for prioritized examination (which I have done numerous times). I note that a foreign application cannot be filed based on a U.S. application subject to a secrecy order (so the nonpub request is no worse than a secrecy order regarding foreign rights). So it is not the patentee Congress is concerned with (or if it is, they are completely clueless).

    I’m not a conspiracy theorist but I think Congress’ real concern here is that a particularly important patent could fall into the wrong hands. For example, if someone (perhaps someone being paid by a hostile foreign power) held a patent on a communication standard or technology which is required to be practiced by all wireless providers, a refusal to license the patent (assuming it is valid) could halt all communications in the country. Whether this is a valid concern or not, I really do not know.