Your patent sucks: USPTO secrecy orders

Transcript

Your patent sucks. USPTO secrecy orders. My name is Steve Hansen. I've been a practicing patent attorney for over 25 years. Not only do I write patents, but I tear apart other people's patents in litigation.

If you like this content, please like, follow, and share. So, I've had more than a couple people bring up the subject of secrecy orders lately, which is odd because in my entire career, I've never had a secrecy order come up, but I guess people read about it and they got worried about it. So, the patent office screens applications to see if they have any potential national security interest in them based on what the subject matter is. And if they do, then they refer them over to the various heads of the different federal agencies, you know, in particular the military uh the different branches of the military. And then they review the application and if they think that the the application implicates the national security interest, they can ask the they head or the head of the military branch can ask the PTO to issue a secrecy order, which does suck because if you get a secrecy order, that means they're not going to publish the application and they're not going to allow it to issue as a patent.

And you can't publish the application or the subject matter thereof without facing a $10,000 fine. in two years in prison. So, it can really suck. Now, some of the people who've been asking about this seem to think it's more pervasive than it is. It seems to arise more often than not in cases where there's an agreement between the government and some outside company and they're developing the technology together where it might clearly implicate, you know, national security.

things like nuclear processes that are not only useful for um power generation but are also for making weapons or anything else that really has a pretty clear military application. You know, those are the things that seem to be at the greatest amount of risk. Now, if you're not in that category of where you have a contract or with the government or the government has some interest in the invention, the numbers of people who get subject to secrecy orders is pretty small. Um, in fiscal 2025, there were 18 of those kind of secrecy orders. They call them John Doe secrecy orders.

There are in effect right now 6,543 secrecy orders that are still in place because uh they can um renew them. So, they're only good for a year, but they can renew it every year and they can do it at infinitum. Now, if you have this happen to you, uh you know, the first thing you can do is file a petitioner to the commissioner to say, you know, will you revoke this um secrecy order? And if they won't revoke it, then you can file a um an appeal. But, you know, but both those processes are within the agency. So, you know, within the patent office.

So, you know, I don't know how much relief that should bring or anybody to know that's there. You can't go to court, for example, and say, "Please lift the secrecy order." Now, you can under the statute seek compensation for them taking your invention. But the compensation can't be speculative. And it really kind of sucks because you if you have the kind of invention where it might have really taken off, but it hasn't hit the market yet, you know, and you might not really have much of a way to prove how much this patent is worth. And you might not even be able to bring it to market honestly if um because of the secrecy order.

So So it can be hard to prove the damages you might ultimately have been entitled to had you gotten a patent just because of the timing of everything and the fact that the evidence doesn't exist. And so you have to go to the court of federal claims and you know try to um to get compensation. Uh but you know ultimately you don't have a lot of relief and it's kind of a lousy process. The other thing that's related to it is that you know in the United States you can't just file a patent application anywhere in the world. you're supposed to file your first application in the United States.

And if you fail to do so, you can have um the loss of your US rights be the result of that. They want you to file here in the US first so that they can have this review process. And that's true if you're filing a patent cooperation treaty application, too. Even though it's an international patent application, you're going to file with the US patent and trademark office being the receiving office for the application because you're a US citizen. and then it's going to get reviewed the same way and you can have the same problems come up.

So, um yeah, not a lot of great outcomes if you get hit with a secrecy order, but also there aren't a whole lot of secrecy orders that seem to get put in place. And if you're not, you know, really doing something that's got a pretty clear military application, it doesn't seem all that likely that it's going to occur in the first place. So, I hope it helps to keep you out of trouble.