By Donald Zuhn --
On April 20th, the U.S. Patent and Trademark Office published a notice in the Federal Register (77 Fed. Reg. 23662) requesting comments as to whether the U.S. should bar certain patent applications from publication and issuance as "detrimental to the nation's economic security." The notice also seeks comments regarding changes to existing procedures for reviewing patent applications that might be detrimental to national security.
The Office's proposal to place economically significant applications under a secrecy order comes pursuant to a request from Congress. The notice indicates that a report on the 2012 Appropriations Bill by the Subcommittee on Commerce, Justice, Science, and Related Agencies stated that:
By statute, patent applications are published no earlier than 18 months after the filing date, but it takes an average of about three years for a patent application to be processed. This period of time between publication and patent award provides worldwide access to the information included in those applications. In some circumstances, this information allows competitors to design around U.S. technologies and seize markets before the U.S. inventor is able to raise financing and secure a market.
H.R. Rpt. 112–169, at page 18 (July 20, 2011).
The notice also indicates that the Subcommittee instructed the Office to consult with the appropriate agencies and "develop updated criteria to evaluate the national security applications of patentable technologies [and] to evaluate and update its procedures with respect to its review of applications for foreign filing licenses that could potentially impact economic security." According to the notice, the Subcommittee described "economic security" as "ensuring that the United States receives the first benefits of innovations conceived within this country, so as to promote domestic development, future innovation and continued economic expansion."
Pursuant to the Subcommittee's request, the Office now seeks comments as to whether an economic security screening procedure, which borrows from the current national security screening procedure, should be considered. The Office also seeks comments on whether the national security screening procedures are adequate. With regard to economically significant applications, the Office "seeks to obtain feedback on whether the United States Government should institute a new regulatory scheme, modeled from that applied to national security concerns," which "would institute a secrecy order that forbids applicants from disclosing subject matter deemed to be detrimental to national economic security for such period as the national interest requires." The Office provides a list of questions for which it seeks comment on economic security-based secrecy orders at pages 23664-65 of the notice. A number of questions for which the Office seeks on national security-based secrecy orders is provided at page 23665 of the notice.
Comments regarding new procedures for handling applications detrimental to the nation's economic security or current procedures for handling applications detrimental to national security must be submitted by June 19, 2012. Comments can be sent by e-mail to SecrecyOrder.Comments@USPTO.gov, or by regular mail to: Mail Stop Congressional Relations, Attention: Jim Moore, P.O. Box 1450, Alexandra, VA 22313–1450.
Applicants, even sophisticated ones, are themselves often incapable of identifying which patent applications will be important for their businesses. That's why large companies that file many apps will cap the amount they spend on prep & pros - effectively spreading the risk and cost of ultimately unimportant applications across an entire portfolio - but will spare no expense to enforce and/or defend certain issued and known-to-be-valuable patents (much to the chagrin and confusion of many prep & pros practitioners, who don't understand why moving into litigation is more lucrative). Now the *USPTO* is going to identify the important apps? As admitted in the notice, the USPTO can't even get its act together enough to publish apps at 18 months.
What's the USPTO going to do, hire the best Wall Street analysts and former Fed board members to sift through apps and identify the economically important ones? I guess now that the Director has fee setting authority, he can raise fees through the roof to pay for these experts.
There's already an efficient means to prevent information from becoming public before a patent issues: for applicants who think their applications may be important, and are willing to settle for US filings only, a non-publication request is an option. Case in point: non-publication was one of the things of which The Medicines Company availed itself in order to try to protect Angiomax before TMC successfully lobbied for adoption of "The Dog Ate My Homework Act" as part of the AIA last year. Otherwise, most applicants opt for filings in the PCT and other jurisdictions where 18-month publication actually occurs at 18 months.
And how economically intelligent will it be when the USPTO says "no foreign filing certificate" b/c an invention is deemed to be too economically important, thus preventing the applicant from filing elsewhere and rendering its own US-based sales and other disclosures prior art against itself but fodder for foreign entities who want to reverse engineer a product? Better yet, will such applicants be precluded from making and selling their products at all? I think that's called cutting off your nose to spite your face.
Sounds like a dumb suggestion to me...even by Congressional standards.
Posted by: Dan Feigelson | April 30, 2012 at 02:18 AM
I have mixed emotions on this.
On the one hand, perhaps someone in government is wising up to the notion that naked disclosure on its own may not be such a good thing for American interests.
On the other, adding a cloak of bureaucracy (to determine "which" items merit economic security status), is problematic, given that the true economic worth of inventions are not likely to be able to be known a priori.
The far simpler thing to do is to simply repeal the forced early publication and return to the actual Quid Pro Quo that ruled the patent system decade after decade (submarine patents have largely been successfully dealt with with the Term provision changes). This would also accord with the Prior User Rights which have gained increased status due to the AIA and for which, no publication is actually required until far downstream of the patent process (since PUR only comes into play as a defense to a patent infringement suit).
Posted by: Skeptical | April 30, 2012 at 11:57 AM