An Overview on the Invention Secrecy Act of 1951

8th October, 2021 - 11:52 am Categories: Patents 0 Comments

The purpose of the Invention Secrecy Act, 1951

The Invention Secrecy Act was created to restrict the exportation of classified information that may be potentially detrimental to the security of the country. In other words, the Act enables governments to impose “secrecy orders” on a patent application that comprises of classified information that is sensitive in nature, thus restricting the disclosure of any information pertaining to the invention and withholding the grant of a patent for that particular invention. The Act’s provisions can be imposed upon private individuals or companies as well if the requirement arises. In sum, the Invention Secrecy Act prevents the disclosure of inventions or technologies if the information provided in the patent application poses a threat to the national security of the United States. The origin of the Invention Secrecy Act can be traced back to 1914, during World War I. During the war, Congress had authorized the United States Patent and Trademark Office to segregate patent applications into a separate category of defense-related patents. Initially, the act was in force only during the period of World War I. However, the Act was also imposed in October 1941 due to anticipations surrounding the US’s entry into World War II. Over 11,200 patent applications were classified as confidential information. Consequently, such patent applications were under secrecy orders. Moreover, notices were issued to inventors in order to restrict them from disclosing information related to the invention or filing the application in foreign countries for security reasons. Most often than not, inventions related to radars, radio systems, and other electronic items received such secrecy orders.

The Patent Security Category Review List

In order to classify such inventions, defense agencies such as the Army, Navy, Air force, NSA, NASA, and the Department of Energy issues a “Patent Security Category Review List”. The technologies that are enlisted under this Act are not known to the public. Thus, it is not possible to decipher what inventions fall under the purview of this Act. However, technologies that carry great relevance in military-related operations are often classified as secrets. This may include inventions such as weapons, cryptography-related technologies, and atomic energy-related inventions.

The procedure for issuing a secrecy order

A secrecy order is often issued when the government holds a property interest in the invention. Property interest includes the ownership of all rights pertaining to the invention. In some cases, the Government is entitled to the interest of only one or more joint inventors. Several Courts have adjudicated that a government property interest may include “inventions made by government employees either as part of their normal duties or on their own behalf on which patent applications have been filed by the government” as well as “inventions made by government contractors during the performance of their contractual duties. Since all government-controlled interests in patent applications are registered in the Patent Office’s Government register, it is fairly easy to determine if a government property interest exists over an invention. In sum, it can be said that the decision to issue a secrecy order subsists on government agencies who may have an interest in the invention. However, in order to establish that the government has a property interest in the invention, it is imperative that the contents of the patent application are capable of potentially creating a threat to national security. Patent applications that are created as a part of contractor research (unlike in-house research that is carried out by governmental organizations) may also receive secrecy orders if it consists of information that is sensitive in nature.

In certain cases, the Government may not have a property interest in the invention. With respect to this, the 1951 Act states as follows:

“Whenever the publication or disclosure of an invention by the granting of a patent, in which the Government does not have a property interest, might, in the opinion of the Commissioner, be detrimental to the national security, he shall make the application for patent in which such invention is disclosed available for inspection to the Atomic Energy Commission, the Secretary of Defense, and the chief officer of any other department or agency of the Government designated by the President as a defense agency of the United States. If disclosure of the invention by the granting of a patent, therefore, would be detrimental to national security, the Atomic Energy Commission, the Secretary of a defense department, or such other chief officer shall notify the commissioner and the commissioner shall order that the invention be kept secret and shall withhold the grant of a patent  for such period as the national interest requires”

Essentially, the Patent Office plays a significant role in issuing secrecy orders in cases wherein Governments have no property interests over the invention.

The impact of a secrecy order

Upon issuing a secrecy order for a particular invention, it is examined for patentability purposes. Following this, the Patent Office issues a ‘notice of allowability’. The notice of allowability plays a crucial role in ending any prosecution pertaining to the patent application. As a result, even if the patent application deals with an invention that is a patentable subject matter, it will not be granted a patent unless the government rescinds the secrecy order. Moreover, any appeals that are related to the patent application will be not be heard before the Board of Patent Appeals unless the secrecy order is lifted.

A secrecy order also restricts the dissemination of any information related to the patent application. The invention will be kept a complete secret by sending the inventor a notice of the secrecy order. Moreover, the inventor is restricted from publishing or disclosing any information related to the invention to a party that is completely unaware of the invention. It is pertinent to note that the violation of the secrecy order is often met with penalties. According to 35 U.S.C S. 182, an inventor who may violate the secrecy order by disclosing or publishing information related to the invention shall upon conviction, be fined $10,000 or imprisonment for not more than two years or both. Thus, it can be inferred that the Secrecy Act plays a pivotal role in ensuring that patent applications that may pose to be a threat to national security are regulated effectively with the help of secrecy orders.

Author: Sanjana, a BBA LLB student of  Symbiosis Law School (Hyderabad), in case of any queries please contact/write back to us at vidushi@khuranaandkhurana.com or Khurana & Khurana, Advocates and IP Attorneys.