FAS | Secrecy | Invention Secrecy || Index | Search | Join FAS


Administration of the Invention Secrecy Act
in the Patent and Trademark Office

(1991)

This article summarizes existing controls over the disclosure and export of national security sensitive technical information in U.S. patent applications. Statutory authority to withhold the issue of patents containing national security sensitive information is provided by the Invention Secrecy Act of 19511 and the Atomic Energy Act of 1954.2 Control over the export of technical data in forms other than a patent application, such as technical publications, service manuals and computer software, is regulated by the export control laws of the Departments of State and Commerce.3

The Invention Secrecy Act of 19514 grants authority to the Commissioner to keep inventions secret and to withhold issue of patents when necessary for the national security. Section 181 of the act established two procedures for handling sensitive patent applications that are dependent upon whether the government has a property interest in the invention. If a government interest exists, imposition of a secrecy order requires only a recommendation to the Commissioner from the involved government department or agency. However, applications in which the government does not have a property interest receive their first national security review in the PTO. They are made available by the Commissioner for inspection by the defense agencies when, in the opinion of the Commissioner, disclosure "might" be detrimental to the national security. If the agency determines that disclosure "would be detrimental" to the national security, the Commissioner places the application under secrecy order.

The Invention Secrecy Act is administered in the Patent & Trademark Office by the Special Laws Administration Group, also designated as Group 220. This group includes approximately 60 professionals, including some 50 patent examiners who are cleared to handle national security and atomic energy classified information The group is supported by approximately 30 administrative personnel.

Group 220 examiners inspect patent applications in which the government does not have a property interest to determine if they contain information that might be detrimental to the national security if patented. Government owned applications are not screened by the PTO. Each government agency is separately responsible for reviewing its own applications and notifying the PTO if they contain information the disclosure of which might be detrimental to the national security.5

The criterion for PTO referral of an application to a defense agency for their review is whether publication of the invention might be detrimental to the national security. To aid the PTO in making this determination, the Department of Defense provides extensive guidance through the Patent Security Category Review List (confidential) and the Militarily Critical Technologies List.(secret).

When the PTO finds an application that contains subject matter within the category guide list, the Licensing & Review (L&R) Branch in the Special Laws Administration Group pulls the application and refers it to the attention of each interested defense agency. These applications remain physically in the Patent & Trademark Office, and microfiche copies are sent to the defense agencies.

Patent applications are usually not referred to the defense agencies for review under 181 if:

The Armed Services Patent Advisory Board (ASPAB) is a semi-autonomous interservice unit operated under the administrative control of the Army Judge Advocate General's intellectual property division. ASPAB serves as the conduit for referral of all patent applications from the Patent & Trademark Office to the Department of Defense. ASPAB designates the appropriate DoD technical experts to do the actual review. If it is concluded that publication or disclosure of the application would be detrimental to the national security, ASPAB recommends that the PTO impose a secrecy order, which is generally binding on the PTO.

REVIEW AT THE DEFENSE AGENCIES

Each reviewing defense agency must first determine whether the subject matter would be classifiable under a security guideline6 (i.e., would disclosure of the subject matter harm the national security). If the subject matter would be classifiable, a secrecy order must immediately be imposed and the applicant must be informed in the secrecy order how to protect the subject matter.

Applicants known to have a DoD security agreement (a condition of most defense contracts) have proper storage facilities are obligated to protect the information under regulations set forth in the Industrial Security Manual (ISM). Thus, a secrecy order imposed on a classifiable application in which the applicant is known to have a DoD secruity agreement (referred to as a Type 2 Secrecy Order) may simply refer to the ISM to establish control over further disclosure and handling of the application.

However, if the subject matter would be classifiable but the applicant does not have a DoD security agreement, he is not obligated to protect the information in compliance with the ISM. He may, in fact, be an independent inventor with no knowledge of security procedures and no facilities for proper storage of classifiable information. Thus, the secrecy order cannot rely upon the ISM to control further disclosure. A Type 3 Secrecy Order would be imposed under these conditions, requiring the applicant to obtain specific permission from the PTO for any further disclosure of the invention. Permission may be requested from the PTO for further disclosure by filing a petition to modify the secrecy order.

Unclassified patent applications may also be placed under secrecy order. Unclassified technical information is generally subject to DoD control if it relates to militarily critical or space technology whose export is controlled by the guidelines contained in 32 CFR Part 250.7 A Type 1 Secrecy Order is used for unclassified applications under control of DoD. It is intended to permit the widest utilization of the technical data while still controlling publication or disclosure that would result in illegal exportation. This type of secrecy order sets forth the applicable export controls for technical data in either the Commodity Control List (CCL) or the Munitions List of the International Traffic in Arms Regulations (ITAR). It also identifies the countries where corresponding foreign patent applications may be filed. The secrecy order specifically authorizes legitimate business use and disclosure of the invention. The level of security control must be safeguarded under conditions that provide adequate protection and prevent access by unauthorized persons.

REVIEW OF ATOMIC ENERGY RELATED APPLICATIONS

Patent applications relating to atomic energy are considered to be particularly sensitive. Congress has provided separate authorization other than 35 USC 181 for DOE to review all patent applications relating to special nuclear material or atomic energy under the Atomic Energy Act (as amended), 42 U.S.C. 2181(c)-(e), as follows:

Penalties for violation of the reporting requirments of 42 USC 2181 are set forth in 2274-2280. Additionally, DOE has the authority under 35 USC 181 to recommend impositon of a secrecy order, carrying penalites for violation of the secrecy order as set forth in 35 USC 185,186.

In addition to the referral requirements of 42 USC 2181, inventions relating to special nuclear material or atomic energy are also referred to DOE for property rights determinations under 42 USC 2182.

NOTES
1. 35 USC 181-188.
2. 42 USC
3. The Export Administration Act of 1979, 50 USC 2401-2420, and the Arms Export Control Act, 22 USC 2751et seq.
4. 35 U.S.C. 181-188.
5. 35 USC 181 reads in pertinent part:
6. The current guideline for national security classification is Executive Order 12356.
7. Statutory authority for DoD to withhold certain types of unclassified technical data from public disclosure derives from 10 U.S.C. 140c (September 24, 1983): Regulations implementing 140c were published as DoD Directive 5230.25 on November 6, 1984 and as 32 CFR Part 250 on December 10, 1984. They authorize DoD to withhold from public disclosure technical data under its control that is unclassified but the export of which is controlled by the guidelines contained in the classified MCTL. The regulaiton applies only to technical data that is "in the possession of, or under control of, the Department of Defense." However, the mere fact that DoD may "possess" such data does not necessarily mean that it is controlled under the regulation. The regulation does not impose additional controls on the dissemination of technical data by private enterprises or individuals beyond those specified by export control laws and regulations (i.e., the Export Control Regulations of the Department of Commerce or the International Traffic in Arms Regulations of the Department of State). Patent applications are considered to be "under control of DOD" for the purposes of this regulation based on the specific authority granted defense agencies to review patent
8. 42 U.S.C. 2014. Definitions


APPENDIX

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




FAS | Secrecy | Invention Secrecy || Index | Search | Join FAS