When the Government Takes and Hides your Invention

Transcript

If you invent something and the government doesn't want others to know about it, they can seize the invention from you and hide it away where it may never again see the light of day. You may be prohibited by law from talking about it, filing another patent application, covering it, or commercializing it to make money from your invention. Merely talking about your invention to others could land you in jail. This is not fake news. This is not conspiracy theory.

This is a real thing. It's happened more than 6,000 times over recent years. It's happened to my clients. In this video, I'm going to talk about inventions that get taken. What happens to the invention when they're seized? And how can you prevent your invention from being taken by the government? And finally, what do you do if your invention is seized and shipped off to some secret government laboratory? In this video, we'll explore the world of taken inventions.

Hi, my name is John Ferrell. I'm a Silicon Valley patent and intellectual property attorney. Welcome back to my channel. In the United States, under the Invention Secrecy Act of 1951, any invention that's deemed to be harmful to the national security of the country can be subject to a secrecy order. A variety of federal agencies, including the Department of Defense, the Department of Homeland Security, NASA, the Department of Justice, can all request secrecy orders on inventions if they believe that a specific invention is going to compromise defense capabilities or intelligence operations of that agency.

A wide range of invention technologies can be caught up in these secrecy orders, including things obviously like weapons systems, but also critical infrastructure such as communication and energy distribution, surveillance and cryptography inventions can also be subject to these secrecy orders. And during World War II, some 11,000 secrecy orders were issued on sensitive inventions. And even non-commercial, seemingly benign inventions can also be caught up in these secrecy orders. As an example, say you have a company that manufactures commercialrade drones. These are small drones, not for military use, but for delivering packages to neighborhoods.

After much experimentation, you've developed a noise dampening capability for your drones that allow the drones to fly without giving off a lot of noise. You're in the process of trying to sell these drones to both FedEx and UPS for future package delivery. Now, imagine that you file a patent application on the silencing mechanism for your drone and immediately the Air Force slaps a secrecy order on your drone patent. In addition to having the secrecy order slapped on your patent application in the patent office, you also receive a correspondence that says that your company is subject to a secrecy order on this particular invention. The secrecy order advises you that your invention now is subject to a secrecy order, that all disclosure, commercial development, and export is restricted, and that filing foreign patent applications is prohibited without express written permission.

The secrecy order will say something like the above identified patent application discloses subject matter the unauthorized publication or disclosure of which would in the opinion of the sponsoring defense agency be detrimental to the national security. Unauthorized publication or disclosure of the subject matter of this patent application may result in abandonment of the patent application and additionally subject the person publishing or disclosing the subject matter to the penalties under USC 186 which by the way includes fine and potential imprisonment if the invention is further classified as either secret or top secret. additional restrictions can be imposed. Now, it's hard to overstate the chilling effect that receiving this secrecy order has on the company because it's unclear from the secrecy order exactly what subject matter contained within the patent application is subject to secrecy. For the drone example, there are all kinds of systems that are described in the patent application.

everything from the body of the drone to the propeller to the noiseancelling algorithm to the battery compartment. And it's usually impossible from the secrecy order itself to know exactly what details your company can't talk about. And out of an abundance of caution and fear, communication within the company gets chilled. Employees become wary of talking to each other. It's not uncommon when passing in the hall, for example, for employees to ask each other whether they're US citizens, so they'll know whether they can disclose details of the project they're working on.

It doesn't take much imagination to appreciate how disruptive this secrecy order can be to the success of this company, merely trying to build some quiet drones to sell to FedEx. Okay. You file your patent application and you receive a secrecy order. What do you do? Well, the first step is to consult an attorney that has experience with secrecy orders. This will help a lot because your attorney will be able to limit the confusion that's caused by the process.

Also, your attorney is going to be able to contact the government and find out what the appropriate next steps will be. And finally, your attorney is going to be able to keep you out of legal trouble in dealing with the order logistics. The second step will be to create an internal policy communication. And this policy communication will explain in plain English to the employees exactly what's expected under the secrecy order. The written policy should identify a policy manager and a method for communicating questions and concerns to the policy manager over the secrecy order.

And a copy of the secrecy order needs to be attached to the policy. As is often the case in dealing with the government, just having a written policy in place will go a long way towards smoothing over any later problems that might arise, minor infractions that occur as a result of misunderstanding of the policy. It's also helpful to contact the examiner, especially if it's an experienced examiner. The examiner may have some insight into the agency involved and may be able to help with communications with the agency and also provide advice to you on next steps that might be required in clearing up the secrecy order. Within the secrecy order itself, there'll be a point of contact, Army, Navy, Homeland Security that you'll be able to contact and this will be your only peepphole into the agency in process.

So, it's a good idea to contact that person and see if you can build a relationship getting as much information as you can again as to what triggered the secrecy order and what changes could be made to eliminate or to overcome the secrecy order. Finally, your attorney can provide you with a list of options to overcoming the secrecy order, including filing a petition with 37 CFR 5.4, 4, which provides a formal petition process for the recision of the secrecy order. Okay. So, what are some of the things that you can do to avoid having secrecy orders slapped on your patent application? Well, there's some obvious things. For example, avoid stamping the pages with the words top secret or secret or even confidential.

These are potential trigger words for the patent office. And patent applications containing the words in bold types stamped top secret, for example, will probably cause your application to immediately be routed to group 220 that has the responsibility for examining applications for military secrets. Avoid using the names of government agencies in your patent applications. suggestions that embodiment of your invention might be particularly interesting to Homeland Security or to the Department of Defense will cause problems in your patent application examination and might trigger review by those particular agencies. When submitting figures, avoid obvious uses of military weapons or military scenarios.

For instance, in our drone example, having a figure showing a swarm of these super silent, stealthy drones flying over a city in formation could easily trigger scrutiny by interested government agencies. The government does have some trigger words that it looks for automatically in patent applications. And although we don't know exactly what those trigger words are, some of them are not too hard to imagine. For example, words like stealth or cryptography, nuclear weapons or tanks, radar, heat-seeking missiles, high energy lasers, satellites, and boweapons. These are just a few of the terms that come to mind.

So, you want to be particularly sensitive when describing alternative embodiment in your patent application. The examples of secrecy orders that my clients have been subjected to have been the result of fairly innocent use of terms that were misconstrued or misunderstood by government agencies. Intellectually, it's easy to understand why these secrecy orders are necessary and important for the government. But they're also subject to great overreach. It's very easy for a government agency to slap a secrecy order on a patent application.

But I can tell you from experience, it's much easier for the government to look at something and decide that it should be held under secrecy order than for it to remove a secrecy order once someone in the government has determined that a secrecy order should apply. And the criteria required to declare an invention to be potentially of interest to the government is very murky. It's not well defined at times, especially in certain technology areas where it's very easy for the government to heir on the side of being a little overprotective with respect to American technology. And most insidious of all is the burden of expense in dealing with these secrecy orders lies with the inventor or with the company. Once a secrecy order is applied, it's up to the owner of the technology to find a way to get that order overturned or rescended.

And in dealing with agencies in the government whose job it is to keep secrets, you can imagine that this could be a very difficult and expensive process. And it's not a stretch to imagine that once a technology is declared secret, it may never again see the light of day. Now, one quick legal footnote is that the fifth amendment of the US Constitution prohibits the taking of private property by the government without just compensation. So, if the government reaches in and decides to take your technology and forever keep it a secret, then you deserve just compensation and you deserve to be paid for that by the government. Your attorney can help you file a claim with the government if the government decides to take and keep your technology.

Okay, that's really all I have to say today about secrecy orders and inventions that get taken by the government. It really is a thing and there are a lot of inventions that are taken or hidden away. Roughly 125 inventions a year get taken by the government. If you'd like some help with your taken inventions or help with your company's patent portfolio or patents, I'd love to hear from you. You can reach me at the email address below.

In the meantime, leave your comments. I'd love to hear your ideas, thoughts, and experiences. Until then, I'll see you on the next video. [Music]