Assessing & Managing Risk
Patent Security Reviews
Unclassified U.S. Patent Applications
Technology development often results in inventors, foreign and domestic, applying for patents to secure the sole right to exclude others from making, using, or selling an invention. In exchange for granting a patent, the government requires the information unique to the invention be published in the public domain. The Invention Secrecy Act of 1951, Pub. L. 82-256, codified at 35 U.S.C. Â§Â§ 181-188, mandates the review of patent applications where disclosure or publication might be detrimental to national security.
The Interagency process starts with the U.S. Patent and Trademark Office (USPTO) screening submissions for inventions with direct or potential national security implications if publicly released. The USG reviewers include DoD, the Department of Energy (DOE), and any agency designated by the President as a defense agency. If a Secrecy Order is recommended by one of the reviewers, the Commissioner of Patents â€œshall order that the invention be kept secret. Based upon this recommendation, the Office of the Commissioner for Patents imposes the Secrecy Order, which prevents the application's disclosure and publication and withholds the issue of the patent, if applicable.
The USPTO staffs patent applications to DTSA for review within DoD. DTSA manages the electronic staffing of the patent applications to the Services and defense agencies with a web-based case management system, the DoD Patent Application Review System (DPARS). After the Services and defense agencies complete review of the applications, DTSA provides the collective DoD recommendations to USPTO.
Foreign Patent Applications with Secrecy Orders
The U.S. has bilateral and multilateral agreements with countries for the reciprocal filing of classified patent applications and/or patent applications with Secrecy Orders. The major multilateral agreement, the NATO Agreement for the Mutual Safeguarding of Secrecy of Inventions Relating to Defence and for Which Applications for Patents Have Been Made, allows for patent applications with Secrecy Orders filed in one NATO country to be filed in the U.S., and vice versa, and authorizes automatic reciprocal Secrecy Orders. DTSA has established and maintains diplomatic channels at U.S. embassies in certain countries for addressing the requirements of the NATO Agreement. This Agreement provides an avenue for the sharing of classified inventions and allows for international collaboration in the research and development of the defense-related technology.