Patent Office Secrecy Orders

Transcript

hello and welcome to Williams mullen's trending now an IP podcast a legal podcast focused on providing Innovative companies and investors with important and timely information concerning intangible assets such as patents trademarks copyrights and trade secrets I'm your host Tom bergert and today I'll be joined by my colleague Clint Brandon a partner in our IP Practice Group here at Williams Mullen to discuss patent office secrecy orders Clint how are you doing today I'm doing well Tom how are you doing doing great great uh glad to have you here and glad to talk about this topic with you uh as a first question why is the patent office involved in the issuance of secrecy orders that's a very good question Tom it really goes back to the beginning of the Cold War and the various agencies in the United States at that time were very concerned that patenting activity might lead to uh sensitive technical information being published and made available to America's enemies and so the convention secrecy Act was enacted uh at that time and it sought to prevent publication of patent applications that were deemed detrimental to the National Security of the United States okay so if I'm an applicant and I think my technology maybe but I'm not sure uh do I need to put that on the application cover sheet or how do applications wind up subject to secrecy orders that's a very good question Tom generally patents don't publish until 18 15 months after they're filed and during that time period interested agencies such as the Department of Defense or the department of energy May review patent applications and determine if any of them may be detrimental to the National Security the PTO can also review applications itself and send them to those agencies for review and you will know within 6 months of filing your application if that has happened and so how if I'm the applicant how do I find out about that they they notify me or how does that work yes the patent office will actually send out much like it does it sends out any communication during the patent prosecution process it'll send out a notification that your patent application has been subjected to a secrecy order and at that time do I freak out or what do I do is it give me uh any kind of options or actions that I need to take well there are several different types of secrecy orders there are three primary types and the first one is a type one secrecy order these secrecy orders relate to critical technology with military or space applications and they still allow you to uh to undertake foreign filings in certain jurisdictions and they still let you share your invention with us persons and those are US citizens us companies uh organizations Incorporated in the United States so for those applications there are some limited restrict on what you can do uh type two secrecy orders relate to classified or classifiable information and that information is treated just as if it were classified uh like any other uh DOD or doe material so that's much more restrictive and lastly type three is most restrictive and that basically means you cannot disclose any information to anyone without written permission from the commissioner of patent so it essentially shuts down not only your patent application process but any other activities you were undertaking with that invention so it sounds like I don't have to respond actively it's more of a what am I Limited in doing and who can I disclose relevant information to is that accurate that's correct Tom yes you don't have to actively do anything uh in relation to the secrecy order got it um so if my application is then subjected to a secrecy order what happens to the application that's also a good question Tom because as a patent applicant you've invested a lot of money and time in getting your patent application filed and you would like to reap the benefits of of those activities the good news is that while it's subject to a secrecy order the prosecution of the application continues uh however the application will not publish if you continue through the prosecution process with office actions from The Examiner responses to those office actions and actually get to the point where the patent application is is allowable that's where the secrecy order has an impact and it essentially stalls the patent prosecution process at that point in until the secrecy order issue is resolved and when is that resolved is there a standard time or does it depend upon the application uh there is a standard one-year ter limit for a uh secrecy order however they can be renewed for multiple one-year terms and it's very common for them to have uh two or three renewals and that process is that the same type of notification so I have a one-year secrecy order my application is still pending I haven't heard anything do I get another notice that says it's been renewed or how do I inquire about that yes you will get another notice stating that the secrecy order has been renewed for another one-year term great in other than a secrecy order is there any other way that an application that I file might not be published yes uh there may be instances where you as a patent applicant do not want your patent application published maybe you don't want your competitors to see what your R&D is currently doing uh there may be other reasons related to uh investment and other concerns and one of the things you can do is you can submit a non-publication request uh that will it once the PTO receives that they will with they will withhold the application for publication however that comes at a cost you will not be allowed to uh seek foreign counterparts of your US Patent so you couldn't simultaneously seek patent protection in the United States and another jurisdiction okay so if I want to file abroad I cannot request non-publication that's correct okay uh so back to the secrecy orders then what are my rights if the USPTO issues a secrecy order you do have a few uh recourses if the patent office issues a secrecy order against you one good thing is that I mentioned earlier that you have a a delay in issuance once your patent application gets into a state where it's allowed you do get a patent term extension in the same amount of in the amount of time of that DeLay So what that means is if you're uh patent application is delayed from issuance for 2 years you will have the term of the patent extended through a patent term adjustment for a period of two years as well so you get some of your time back but it comes on the back end of the patent rather than on the the front end of the patent the the other issue the other uh course of action you can take if the secrecy order issue persists for an extended period of time is that you can request compensation from the government for the damage caused by the secrecy order and this is limited it is not really intended to fully compensate you but what it does is it at least mitigates the damage somewhat the the default rule is that you get 75% of just compensation as determined by the head of the agency that issued the secrecy order interesting interesting uh so if I should violate a secrecy order I know you talked about the type one type two and type three secrecy orders uh what happens how do people know and and what happens to me well there there can be some serious consequences for violating a a patent office secrecy order you get you're subject to fines of $110,000 uh and you're also subject to imprisonment for not more than two years that sounds like a key takeaway to me uh what other key takeaways should we take from this episode well I think it's important especially for companies who operate in the in the defense industry to to be aware of patent office secrecy orders and to recognize that this is something that may pop up from time to time uh Don't Panic it's not the end of the world there are some additional burdens imposed but there are also some uh remedies that help mitigate those burdens somewhat very very helpful thanks Clint well that wraps up our discussion about patent office secrecy orders I'd like to thank Clint Brandon for joining me about on our trending now IP podcast if you have any questions or suggestions for future episodes please contact us you can also visit our IP practice web page at Williams Mullen dcomp and there you can find out more about our team as well as past episodes of this podcast and legal alerts be sure to subscribe to this podcast to be notified when our next episode posts thank you for listening and until next time