Notice of Request for Comments on the Feasibility of Placing Economically Significant Patents Under a Secrecy Order and the Need To Review Criteria Used in Determining Secrecy Orders Related to National Security, 23662-23665 [2012-9503]

Download as PDF 23662 Federal Register / Vol. 77, No. 77 / Friday, April 20, 2012 / Notices Dated: April 17, 2012. Tracey L. Thompson, Acting Director, Office of Sustainable Fisheries, National Marine Fisheries Service. [FR Doc. 2012–9539 Filed 4–19–12; 8:45 am] BILLING CODE 3510–22–P DEPARTMENT OF COMMERCE National Oceanic and Atmospheric Administration Mid-Atlantic Fishery Management Council; Public Meeting [FR Doc. 2012–9540 Filed 4–19–12; 8:45 am] National Marine Fisheries Service (NMFS), National Oceanic and Atmospheric Administration (NOAA), Commerce. ACTION: Notice of a public meeting. AGENCY: The Social and Economic Sub-Committee of the Mid-Atlantic Fishery Management Council’s (Council) Scientific and Statistical Committee (SSC) will meet with the Council’s Atlantic Mackerel, Squid, and Butterfish Advisory Panel (AP). The purpose of the meeting is to develop Fishery Performance Reports for the Atlantic Mackerel, Squid, and Butterfish fisheries in preparation for setting specifications for 2013. DATES: The meeting will be held on Monday, May 7, 2012, from 8:30 a.m. to 6 p.m. ADDRESSES: The meeting will be held at the Four Points by Sheraton BWI, 7032 Elm Road, Baltimore, MD 21240; telephone: (410) 859–3300. Council address: Mid-Atlantic Fishery Management Council, 800 N. State Street, Suite 201, Dover, DE 19901; telephone: (302) 674–2331. FOR FURTHER INFORMATION CONTACT: Christopher M. Moore Ph.D., Executive Director, Mid-Atlantic Fishery Management Council, 800 N. State Street, Suite 201, Dover, DE 19901; telephone: (302) 526–5255. SUPPLEMENTARY INFORMATION: The purpose of the meeting is to create fishery performance reports by the Council’s Atlantic Mackerel, Squid, and Butterfish Advisory Panel (AP). The intent of these reports is to facilitate a venue for structured input from the Advisory Panel members for the Atlantic Mackerel, Squid, and Butterfish specifications process, including recommendations by the Council and its Scientific and Statistical Committee (SSC). Although non-emergency issues not contained in this notice may come before this group for discussion, those tkelley on DSK3SPTVN1PROD with NOTICES VerDate Mar<15>2010 18:17 Apr 19, 2012 Jkt 226001 Special Accommodations: The meeting is physically accessible to people with disabilities. Requests for sign language interpretation or other auxiliary aids should be directed to M. Jan Saunders at the Mid-Atlantic Council Office, (302) 526–5251, at least 5 days prior to the meeting date. Dated: April 17, 2012. Tracey L. Thompson, Acting Director, Office of Sustainable Fisheries, National Marine Fisheries Service. RIN 0648–XB170 SUMMARY: issues may not be the subject of formal action during this meeting. BILLING CODE 3510–22–P DEPARTMENT OF COMMERCE National Oceanic and Atmospheric Administration RIN 0648–XB171 North Pacific Fishery Management Council; Public Meeting National Marine Fisheries Service (NMFS), National Oceanic and Atmospheric Administration (NOAA), Commerce. ACTION: Notice of a public meeting. AGENCY: The North Pacific Fishery Management Council’s (NPFMC) Crab Plan Team (CPT) will meet in May in Anchorage, AK. DATES: The meeting will be held May 7– 10, 2012, from 9 a.m. to 5 p.m. ADDRESSES: The meeting will be held at the Anchorage Hilton Hotel, 500 West Third Avenue, Dillingham Room, Anchorage, AK. Council address: North Pacific Fishery Management Council, 605 W. 4th Avenue, Suite 306, Anchorage, AK 99501–2252. FOR FURTHER INFORMATION CONTACT: Diana Stram, NPFMC; telephone: (907) 271–2809. SUPPLEMENTARY INFORMATION: The Plan Team meeting agenda includes: Review of workshop reports on modeling and recruitment and recommendations on recruitment time frames for BMSY, Tanner crab model review and recommendations on use in specifications in 2012/13, review of rebuilding projections for Tanner crab, final OFL and ABC specification for Norton Sound red king crab, Aleutian Islands golden king crab, Pribilof Islands golden king crab and Adak red king crab for 2012/13,review data for AIGKC model and plans for model review in September, recommend appropriate stock boundary for the SUMMARY: PO 00000 Frm 00005 Fmt 4703 Sfmt 4703 Pribilof Islands blue king crab stock, review of methodology to set OFL for St Matthew and Pribilof Islands blue king crab stocks, snow crab model proposals for 2012/13, discuss proposed crab bycatch limits in groundfish fisheries, handling mortality study, BMSY study, growth and maturity study, economic SAFE report overview, and Bristol Bay red king crab spawning effects paper. The Agenda is subject to change, and the latest version will be posted at http://www.fakr.noaa.gov/npfmc/ PDFdocuments/membership/PlanTeam/ Crab/CPTagenda512.pdf. Although non-emergency issues not contained in this agenda may come before this group for discussion, those issues may not be the subject of formal action during this meeting. Action will be restricted to those issues specifically listed in this notice and any issues arising after publication of this notice that require emergency action under section 305(c) of the Magnuson-Stevens Fishery Conservation and Management Act, provided the public has been notified of the Council’s intent to take final action to address the emergency. Special Accommodations These meetings are physically accessible to people with disabilities. Requests for sign language interpretation or other auxiliary aids should be directed to Gail Bendixen at (907) 271–2809 at least 7 working days prior to the meeting date. Dated: April 17, 2012. Tracey L. Thompson, Acting Director, Office of Sustainable Fisheries, National Marine Fisheries Service. [FR Doc. 2012–9541 Filed 4–19–12; 8:45 am] BILLING CODE 3510–22–P DEPARTMENT OF COMMERCE United States Patent and Trademark Office [Docket No. PTO–P–2012–0012] Notice of Request for Comments on the Feasibility of Placing Economically Significant Patents Under a Secrecy Order and the Need To Review Criteria Used in Determining Secrecy Orders Related to National Security United States Patent and Trademark Office, Department of Commerce. ACTION: Notice of request for comments. AGENCY: Pursuant to a request from Congress, the United States Patent and Trademark Office (USPTO) is seeking comments as to whether the United States should identify and bar from SUMMARY: E:\FR\FM\20APN1.SGM 20APN1 tkelley on DSK3SPTVN1PROD with NOTICES Federal Register / Vol. 77, No. 77 / Friday, April 20, 2012 / Notices publication and issuance certain patent applications as detrimental to the nation’s economic security. The USPTO is also seeking comments on the desirability of changes to the existing procedures for reviewing applications that might be detrimental to national security. DATES: Those wishing to submit written comments should submit those comments for consideration by June 19, 2012. ADDRESSES: Written comments should be sent by electronic mail message via the Internet addressed to SecrecyOrder.Comments@USPTO.gov. Comments may also be submitted by mail addressed to: Mail Stop Congressional Relations, Attention: Jim Moore, P.O. Box 1450, Alexandra, VA 22313–1450. Although comments may be submitted by mail, the USPTO prefers to receive comments via the Internet. After the comment period, the written comments will be available for public inspection at the Office of Policy and External Affairs in the Executive Library located in the Madison West Building, 10th Floor, 600 Dulany Street, Alexandria, Virginia, 22314. Contact: Mona Scott at mona.scott@uspto.gov or (571) 272–5777. In addition, the comments from the public will also be available via the USPTO Internet Web site (address: http://www.uspto.gov). Because comments will be made available for public inspection, information that is not desired to be made public, such as an address or phone number should not be included in the comments. FOR FURTHER INFORMATION CONTACT: Jim Moore, Office of Policy and External Affairs, by phone (571) 272–7300; by email at james.moore@uspto.gov; or by mail addressed to: Mail Stop OPEA, United States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313–1450, ATTN: James Moore. SUPPLEMENTARY INFORMATION: Recently, Congress has asked whether the currently performed screening of patent applications for national security concerns should be extended to protect economically significant patents from discovery by foreign entities. The Commerce, Justice, Science, and Related Agencies Subcommittee’s report on the 2012 Appropriations Bill stated: ‘‘By statute, patent applications are published no earlier than 18 months after the filing date, but it takes an average of about three years for a patent application to be processed. This period of time between publication and patent award provides VerDate Mar<15>2010 18:17 Apr 19, 2012 Jkt 226001 worldwide access to the information included in those applications. In some circumstances, this information allows competitors to design around U.S. technologies and seize markets before the U.S. inventor is able to raise financing and secure a market.’’ H.R. Rpt. 112–169, at page 18 (July 20, 2011) The Subcommittee instructed the USPTO to proceed to study these issues, stating that the ‘‘PTO, in consultation with appropriate agencies, shall develop updated criteria to evaluate the national security applications of patentable technologies [and] to evaluate and update its procedures with respect to its review of applications for foreign filing licenses that could potentially impact economic security.’’ H.R. Rpt. 112–169, at page 19 (July 20, 2011) In this context, the Subcommittee describes ‘‘economic security’’ as ensuring that the United States receives the first benefits of innovations conceived within this country, so as to promote domestic development, future innovation and continued economic expansion. To carry out this study, the USPTO is seeking comments from the innovation community on the question of whether an economic security screening procedure, which borrows from the current national security screening procedure, should be considered. The USPTO is also seeking comments on whether the criteria used in the national security screening procedure adequately perform the desired function. 1. Background A. Secrecy Orders Currently, all patent applications are screened, pursuant to 35 U.S.C. 181, to determine whether the publication or disclosure of the application might be detrimental to national security. Such applications are routed to the Department of Defense and other agencies designated by the President as a ‘‘defense agency of the United States’’ for review prior to publication. The defense agency then makes a substantive determination as to whether the application in question should be placed under a secrecy order for such period as the national interest requires. These agencies also provide the USPTO with criteria used to determine what applications should be screened as well. The owner of an application which has been placed under a secrecy order has a statutory right to appeal from the order to the Secretary of Commerce. The criteria used to determine whether an application should be placed under a secrecy order for national security reasons have been set by numerous statutes, each controlling PO 00000 Frm 00006 Fmt 4703 Sfmt 4703 23663 the disclosure of a certain type of subject matter. For example, all atomic energy information is classified pursuant to the Atomic Energy Act of 1954 unless a positive action is taken to declassify it. The regulations implementing the Atomic Energy Act are promulgated by the Department of Energy, and are set forth at 10 CFR Part 810. Other applicable statutes governing the movement of material or information to a destination outside the legal jurisdiction of the United States include the Arms Export Control Act of 1968 (22 U.S.C. 2751 et seq.), the Export Administration Act of 1979 (50 U.S.C. App. 2401–2420) (in force pursuant to the Presidential Notice of August 12, 2011, titled ‘‘Continuation of Emergency Regarding Export Control Regulations,’’ 76 Fed. Reg. 50661), and the Defense Authorization Act of 1984 (10 U.S.C. 130). B. Effects of Secrecy Orders on Foreign Patent Protection and Exports A secrecy order severely restricts the applicant’s ability to obtain patent coverage outside of the United States. A secrecy order prevents U.S. publication and patent issuance, pursuant to 35 U.S.C. 181 and 35 U.S.C. 122(b)(2)(A)(ii). A secrecy order also prevents any foreign or international filing of the application, with very limited exceptions as set forth in 37 CFR 5.5. An applicant having a patent application under a secrecy order in the United States who violates that order through publication, disclosure, or filing of a foreign patent application shall be subject to abandonment of the United States patent application, pursuant to 35 U.S.C. 182. Under 35 U.S.C. 184, foreign filings are prohibited for applications under secrecy orders without the concurrence of the reviewing agency that requested the secrecy order. For United States applicants desiring to file a patent application in a foreign country and maintain priority of invention back to the United States filing date, a foreign application for patent must be filed within one year of the United States filing date, in accordance with Article 4 of the Paris Convention. If the secrecy order is lifted after that one-year period, the United States applicant may file a patent application in a foreign country; however, applicant will not be accorded the priority of the United States filing date. Where a secrecy order is applied to an international application, the application will not be forwarded to the International Bureau as long as the secrecy order remains in effect (PCT Article 27(8) and 35 U.S.C. 368). If the E:\FR\FM\20APN1.SGM 20APN1 23664 Federal Register / Vol. 77, No. 77 / Friday, April 20, 2012 / Notices tkelley on DSK3SPTVN1PROD with NOTICES secrecy order remains in effect, the international application will be declared withdrawn (abandoned) because the Record Copy of the international application was not received in time by the International Bureau (37 CFR 5.3(d), PCT Article 12(3), and PCT Rule 22.3). It is, however, possible to prevent abandonment within the United States if the international application designates the United States under the requirements of 35 U.S.C. 371(c); see MPEP 1832. Additionally, a secrecy order based upon national security operates in tandem with United States export control as set forth by statute in the Export Administration Regulations, 15 U.S.C. 734.3(b)(1). The export of a product covered by one of the categories for which a patent application would be placed under a secrecy order is subject to control by the defense agency that regulates such subject matter. If a new category of secrecy order subject matter is to be created (economic security) the question of whether export of that subject matter would be regulated by a United States agency would need to be addressed. In such a case, a domestic entity having a patent application placed under an economic secrecy order could be restricted from exporting any product covered by that application until the secrecy order is lifted by the USPTO operating in concert with the relevant United States agency. C. Currently Available Procedures to Assist Maintaining Secrecy Until Patent Issuance Many foreign jurisdictions publish full applications at eighteen months. Recent proposed legislation would instruct the United States Patent and Trademark Office to publish only an abstract of the application or otherwise amend 35 U.S.C. 122(b)(2)(B)(i). In the United States two procedures are available to prevent a patent application from publication. First, an applicant may request nonpublication of the application until such time as the application issues as a patent. Under 35 U.S.C. 122(b)(2)(B)(i), an applicant may request nonpublication upon filing of the patent application. An applicant making such a request must certify that the invention disclosed in the application has not and will not be the subject of an application filed in another country, or filed under a multilateral international agreement that requires publication of applications 18 months after filing. The second procedure that can prevent a patent application from publication is a secrecy order under 35 VerDate Mar<15>2010 18:17 Apr 19, 2012 Jkt 226001 U.S.C. 181 and 35 U.S.C. 122(b)(2)(A)(ii). A secrecy order is a Governmental directive, rather than a private elective, which prevents an applicant from obtaining patent protection and makes the application secret until the Government deems it advisable to the application to proceed to issuance. A secrecy order is effective to restrict publication, disclosure, or filing of a foreign patent application, for such period as the national interest requires. In contrast, a nonpublication request restricts publication of the patent application only up to the date of the issuance of a patent, and may be rescinded by the applicant at an earlier date. An alternative to preventing publication of a patent application is to expedite its prosecution, which reduces the time between disclosure and patent issuance. Prioritized examination, as authorized by Section 11(h) of the Leahy-Smith America Invents Act, sets an aggregate time goal of 12 months for an application to reach final disposition, which may be a final rejection or an allowance of the claims. By submitting a request upon filing the patent application, accompanied by the proper fees, a patent applicant may potentially receive an issued patent prior to the 18month publication date. 2. Scope of Requested Comments The Subcommittee has raised the concern of a potential risk of loss of competitive advantage during the period of time between publication and patent grant. Taking into account the current procedures through which an applicant may elect to defer publication of a patent application until patent issuance or expedite its prosecution, this Notice seeks to obtain feedback on whether the United States Government should institute a new regulatory scheme, modeled from that applied to national security concerns. This new procedure would institute a secrecy order that forbids applicants from disclosing subject matter deemed to be detrimental to national economic security for such period as the national interest requires. Interested members of the public are invited to submit written comments on issues that they believe relevant to whether, and under what circumstances, the United States should extend the current framework for placing patent applications under an order of secrecy to establish an additional screening program based on economic factors. The USPTO has not taken a position, nor is it predisposed to any particular views, on the following questions. PO 00000 Frm 00007 Fmt 4703 Sfmt 4703 Comments on one or more of the following would be helpful: Questions on Economic Security-Based Secrecy Orders 1. Should the USPTO institute a plan to identify patent applications relating to critical technologies or technologies important to the United States economy to be placed under secrecy orders? 2. Which governmental body should be designated by the President to provide the USPTO with the final determination as to which applications should receive this treatment? 3. Which mechanisms should a governmental body use, at the time a patent application is filed, to determine that publication at 18-months of that particular application would be detrimental to national economic security? 4. What criteria should be used in determining that dissemination of a patent application would be detrimental to national economic security such that an application should be placed under a secrecy order? 5. Would regulations authorizing economic secrecy orders be covered by the current statutory authority provided to the USPTO, or would such orders require a new statutory framework? 6. What would be the effect of establishing a new regulatory scheme based on economic security on businesses, industries, and the economy? 7. How could Government agencies best perform such a determination while remaining in compliance with applicable laws and treaty obligations? 8. How would such a policy affect the public notice function that underlies the policy of publication, including the ability of United States inventors and innovators to timely access the newest technical information upon which to build and stay ahead? 9. What would be the impact on United States innovators, companies, and employers? How would such a secrecy order affect United States businesses that currently have substantial business operations or sales in foreign countries? 10. Are the procedures currently available before the USPTO, such as nonpublication requests and prioritized examination, sufficient to minimize risks to applicants and allay concerns with 18-month publication of their invention? If not, why? 11. What are the risks that an economic secrecy order regime would influence other nations to implement similar laws? Would the global implementation of an economic secrecy order regime benefit or hinder the E:\FR\FM\20APN1.SGM 20APN1 Federal Register / Vol. 77, No. 77 / Friday, April 20, 2012 / Notices progress of innovation in the United States? 12. How would such a secrecy order regime affect international efforts toward a more harmonized patent system? 13. Should the USPTO consider limiting what is published at 18 months? This Notice also poses the following questions to determine the adequacy of the criteria used to place various technologies under secrecy orders for national security reasons. Questions on National Security-Based Secrecy Orders 14. How should criteria currently used by United States defense agencies to screen patent applications for potential national security-based secrecy orders pursuant to 35 U.S.C. 181 properly encompass the scope of invention, which may have a bearing on ensuring the United States maintains its technical advantages in defense-related fields? 15. Are there examples where technologies that could relate to United States defense capabilities that were excluded from consideration for a secrecy order? 16. What is the competitive cost to expanding the scope of the criteria used to screen applications for security order consideration? 17. Among patent practitioners, is there a common practice of attempting to avoid consideration for a secrecy order by drafting the patent disclosure in such a way as to not raise national security implications of an invention? Dated: April 16, 2012. David J. Kappos, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office. [FR Doc. 2012–9503 Filed 4–19–12; 8:45 am] BILLING CODE 3510–16–P COMMITTEE FOR PURCHASE FROM PEOPLE WHO ARE BLIND OR SEVERELY DISABLED Procurement List Additions Committee for Purchase From People Who Are Blind or Severely Disabled. ACTION: Additions to the Procurement List. tkelley on DSK3SPTVN1PROD with NOTICES AGENCY: This action adds a product and service to the Procurement List that will be furnished by nonprofit agencies employing persons who are blind or have other severe disabilities. DATES: Effective Date: 5/21/2012. SUMMARY: VerDate Mar<15>2010 18:17 Apr 19, 2012 Jkt 226001 Committee for Purchase From People Who Are Blind or Severely Disabled, Jefferson Plaza 2, Suite 10800, 1421 Jefferson Davis Highway, Arlington, Virginia, 22202–3259. FOR FURTHER INFORMATION CONTACT: Barry S. Lineback, Telephone: (703) 603–7740, Fax: (703) 603–0655, or email CMTEFedReg@AbilityOne.gov. SUPPLEMENTARY INFORMATION: ADDRESSES: Additions On 2/24/2012 (77 FR 11072–11073), the Committee for Purchase From People Who Are Blind or Severely Disabled published notice of proposed additions to the Procurement List. After consideration of the material presented to it concerning capability of qualified nonprofit agencies to provide the product and service and impact of the additions on the current or most recent contractors, the Committee has determined that the product and service listed below are suitable for procurement by the Federal Government under 41 U.S.C. 8501–8506 and 41 CFR 51–2.4. Regulatory Flexibility Act Certification I certify that the following action will not have a significant impact on a substantial number of small entities. The major factors considered for this certification were: 1. The action will not result in any additional reporting, recordkeeping or other compliance requirements for small entities other than the small organizations that will furnish the product and service to the Government. 2. The action will result in authorizing small entities to furnish the product and service to the Government. 3. There are no known regulatory alternatives which would accomplish the objectives of the Javits-WagnerO’Day Act (41 U.S.C. 8501–8506) in connection with the product and service proposed for addition to the Procurement List. End of Certification Accordingly, the following product and service are added to the Procurement List: Product NSN: 6510–00–786–3736—Pad, Isopropyl Alcohol Impregnated, 1″ x 1.375″. NPA: Lighthouse of Central Florida, Orlando, FL. Contracting Activity: Defense Logistics Agency Troop Support, Philadelphia, PA. Coverage: C–List for 25% of the requirement of the Department of Defense, as aggregated by the Defense Logistics Agency Troop Support, Philadelphia, PA. PO 00000 Frm 00008 Fmt 4703 Sfmt 4703 23665 Service Service Type/Location: Janitorial Service, U.S. Coast Guard Sector New Orleans, 200 Hendee Street, New Orleans, LA. NPA: The Arc of Greater New Orleans, Metairie, LA. Contracting Activity: Department of Homeland Security, U.S. Coast Guard, SILC East, Norfolk, VA. Barry S. Lineback, Director, Business Operations. [FR Doc. 2012–9588 Filed 4–19–12; 8:45 am] BILLING CODE 6353–01–P COMMITTEE FOR PURCHASE FROM PEOPLE WHO ARE BLIND OR SEVERELY DISABLED Procurement List Proposed Additions Committee for Purchase From People Who Are Blind or Severely Disabled ACTION: Proposed additions to the Procurement List. AGENCY: The Committee is proposing to add services to the Procurement List that will be provided by nonprofit agencies employing persons who are blind or have other severe disabilities. Comments Must be Received On or Before: 5/21/2012. ADDRESSES: Committee for Purchase From People Who Are Blind or Severely Disabled, Jefferson Plaza 2, Suite 10800, 1421 Jefferson Davis Highway, Arlington, Virginia 22202–3259. SUMMARY: FOR FURTHER INFORMATION OR TO SUBMIT COMMENTS CONTACT: Barry S. Lineback, Telephone: (703) 603–7740, Fax: (703) 603–0655, or email CMTEFedReg@AbilityOne.gov. SUPPLEMENTARY INFORMATION: This notice is published pursuant to 41 U.S.C. 8503(a)(2) and 41 CFR 51–2.3. Its purpose is to provide interested persons an opportunity to submit comments on the proposed actions. Additions If the Committee approves the proposed additions, the entities of the Federal Government identified in this notice will be required to procure the services listed below from nonprofit agencies employing persons who are blind or have other severe disabilities. Regulatory Flexibility Act Certification I certify that the following action will not have a significant impact on a substantial number of small entities. The major factors considered for this certification were: 1. If approved, the action will not result in any additional reporting, recordkeeping or other compliance E:\FR\FM\20APN1.SGM 20APN1

Agencies

[Federal Register Volume 77, Number 77 (Friday, April 20, 2012)]
[Notices]
[Pages 23662-23665]
From the Federal Register Online via the Government Printing Office [www.gpo.gov]
[FR Doc No: 2012-9503]


-----------------------------------------------------------------------

DEPARTMENT OF COMMERCE

United States Patent and Trademark Office

[Docket No. PTO-P-2012-0012]


Notice of Request for Comments on the Feasibility of Placing 
Economically Significant Patents Under a Secrecy Order and the Need To 
Review Criteria Used in Determining Secrecy Orders Related to National 
Security

AGENCY: United States Patent and Trademark Office, Department of 
Commerce.

ACTION: Notice of request for comments.

-----------------------------------------------------------------------

SUMMARY: Pursuant to a request from Congress, the United States Patent 
and Trademark Office (USPTO) is seeking comments as to whether the 
United States should identify and bar from

[[Page 23663]]

publication and issuance certain patent applications as detrimental to 
the nation's economic security. The USPTO is also seeking comments on 
the desirability of changes to the existing procedures for reviewing 
applications that might be detrimental to national security.

DATES: Those wishing to submit written comments should submit those 
comments for consideration by June 19, 2012.

ADDRESSES: Written comments should be sent by electronic mail message 
via the Internet addressed to SecrecyOrder.Comments@USPTO.gov. Comments 
may also be submitted by mail addressed to: Mail Stop Congressional 
Relations, Attention: Jim Moore, P.O. Box 1450, Alexandra, VA 22313-
1450. Although comments may be submitted by mail, the USPTO prefers to 
receive comments via the Internet.
    After the comment period, the written comments will be available 
for public inspection at the Office of Policy and External Affairs in 
the Executive Library located in the Madison West Building, 10th Floor, 
600 Dulany Street, Alexandria, Virginia, 22314. Contact: Mona Scott at 
mona.scott@uspto.gov or (571) 272-5777.
    In addition, the comments from the public will also be available 
via the USPTO Internet Web site (address: http://www.uspto.gov).
    Because comments will be made available for public inspection, 
information that is not desired to be made public, such as an address 
or phone number should not be included in the comments.

FOR FURTHER INFORMATION CONTACT: Jim Moore, Office of Policy and 
External Affairs, by phone (571) 272-7300; by email at 
james.moore@uspto.gov; or by mail addressed to: Mail Stop OPEA, United 
States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 
22313-1450, ATTN: James Moore.

SUPPLEMENTARY INFORMATION: Recently, Congress has asked whether the 
currently performed screening of patent applications for national 
security concerns should be extended to protect economically 
significant patents from discovery by foreign entities. The Commerce, 
Justice, Science, and Related Agencies Subcommittee's report on the 
2012 Appropriations Bill stated:

    ``By statute, patent applications are published no earlier than 
18 months after the filing date, but it takes an average of about 
three years for a patent application to be processed. This period of 
time between publication and patent award provides worldwide access 
to the information included in those applications. In some 
circumstances, this information allows competitors to design around 
U.S. technologies and seize markets before the U.S. inventor is able 
to raise financing and secure a market.'' H.R. Rpt. 112-169, at page 
18 (July 20, 2011)

    The Subcommittee instructed the USPTO to proceed to study these 
issues, stating that the ``PTO, in consultation with appropriate 
agencies, shall develop updated criteria to evaluate the national 
security applications of patentable technologies [and] to evaluate and 
update its procedures with respect to its review of applications for 
foreign filing licenses that could potentially impact economic 
security.'' H.R. Rpt. 112-169, at page 19 (July 20, 2011) In this 
context, the Subcommittee describes ``economic security'' as ensuring 
that the United States receives the first benefits of innovations 
conceived within this country, so as to promote domestic development, 
future innovation and continued economic expansion.
    To carry out this study, the USPTO is seeking comments from the 
innovation community on the question of whether an economic security 
screening procedure, which borrows from the current national security 
screening procedure, should be considered. The USPTO is also seeking 
comments on whether the criteria used in the national security 
screening procedure adequately perform the desired function.

1. Background

A. Secrecy Orders

    Currently, all patent applications are screened, pursuant to 35 
U.S.C. 181, to determine whether the publication or disclosure of the 
application might be detrimental to national security. Such 
applications are routed to the Department of Defense and other agencies 
designated by the President as a ``defense agency of the United 
States'' for review prior to publication. The defense agency then makes 
a substantive determination as to whether the application in question 
should be placed under a secrecy order for such period as the national 
interest requires. These agencies also provide the USPTO with criteria 
used to determine what applications should be screened as well. The 
owner of an application which has been placed under a secrecy order has 
a statutory right to appeal from the order to the Secretary of 
Commerce.
    The criteria used to determine whether an application should be 
placed under a secrecy order for national security reasons have been 
set by numerous statutes, each controlling the disclosure of a certain 
type of subject matter. For example, all atomic energy information is 
classified pursuant to the Atomic Energy Act of 1954 unless a positive 
action is taken to declassify it. The regulations implementing the 
Atomic Energy Act are promulgated by the Department of Energy, and are 
set forth at 10 CFR Part 810. Other applicable statutes governing the 
movement of material or information to a destination outside the legal 
jurisdiction of the United States include the Arms Export Control Act 
of 1968 (22 U.S.C. 2751 et seq.), the Export Administration Act of 1979 
(50 U.S.C. App. 2401-2420) (in force pursuant to the Presidential 
Notice of August 12, 2011, titled ``Continuation of Emergency Regarding 
Export Control Regulations,'' 76 Fed. Reg. 50661), and the Defense 
Authorization Act of 1984 (10 U.S.C. 130).

B. Effects of Secrecy Orders on Foreign Patent Protection and Exports

    A secrecy order severely restricts the applicant's ability to 
obtain patent coverage outside of the United States. A secrecy order 
prevents U.S. publication and patent issuance, pursuant to 35 U.S.C. 
181 and 35 U.S.C. 122(b)(2)(A)(ii). A secrecy order also prevents any 
foreign or international filing of the application, with very limited 
exceptions as set forth in 37 CFR 5.5. An applicant having a patent 
application under a secrecy order in the United States who violates 
that order through publication, disclosure, or filing of a foreign 
patent application shall be subject to abandonment of the United States 
patent application, pursuant to 35 U.S.C. 182.
    Under 35 U.S.C. 184, foreign filings are prohibited for 
applications under secrecy orders without the concurrence of the 
reviewing agency that requested the secrecy order. For United States 
applicants desiring to file a patent application in a foreign country 
and maintain priority of invention back to the United States filing 
date, a foreign application for patent must be filed within one year of 
the United States filing date, in accordance with Article 4 of the 
Paris Convention. If the secrecy order is lifted after that one-year 
period, the United States applicant may file a patent application in a 
foreign country; however, applicant will not be accorded the priority 
of the United States filing date.
    Where a secrecy order is applied to an international application, 
the application will not be forwarded to the International Bureau as 
long as the secrecy order remains in effect (PCT Article 27(8) and 35 
U.S.C. 368). If the

[[Page 23664]]

secrecy order remains in effect, the international application will be 
declared withdrawn (abandoned) because the Record Copy of the 
international application was not received in time by the International 
Bureau (37 CFR 5.3(d), PCT Article 12(3), and PCT Rule 22.3). It is, 
however, possible to prevent abandonment within the United States if 
the international application designates the United States under the 
requirements of 35 U.S.C. 371(c); see MPEP 1832.
    Additionally, a secrecy order based upon national security operates 
in tandem with United States export control as set forth by statute in 
the Export Administration Regulations, 15 U.S.C. 734.3(b)(1). The 
export of a product covered by one of the categories for which a patent 
application would be placed under a secrecy order is subject to control 
by the defense agency that regulates such subject matter. If a new 
category of secrecy order subject matter is to be created (economic 
security) the question of whether export of that subject matter would 
be regulated by a United States agency would need to be addressed. In 
such a case, a domestic entity having a patent application placed under 
an economic secrecy order could be restricted from exporting any 
product covered by that application until the secrecy order is lifted 
by the USPTO operating in concert with the relevant United States 
agency.

C. Currently Available Procedures to Assist Maintaining Secrecy Until 
Patent Issuance

    Many foreign jurisdictions publish full applications at eighteen 
months. Recent proposed legislation would instruct the United States 
Patent and Trademark Office to publish only an abstract of the 
application or otherwise amend 35 U.S.C. 122(b)(2)(B)(i). In the United 
States two procedures are available to prevent a patent application 
from publication.
    First, an applicant may request nonpublication of the application 
until such time as the application issues as a patent. Under 35 U.S.C. 
122(b)(2)(B)(i), an applicant may request nonpublication upon filing of 
the patent application. An applicant making such a request must certify 
that the invention disclosed in the application has not and will not be 
the subject of an application filed in another country, or filed under 
a multilateral international agreement that requires publication of 
applications 18 months after filing.
    The second procedure that can prevent a patent application from 
publication is a secrecy order under 35 U.S.C. 181 and 35 U.S.C. 
122(b)(2)(A)(ii). A secrecy order is a Governmental directive, rather 
than a private elective, which prevents an applicant from obtaining 
patent protection and makes the application secret until the Government 
deems it advisable to the application to proceed to issuance. A secrecy 
order is effective to restrict publication, disclosure, or filing of a 
foreign patent application, for such period as the national interest 
requires. In contrast, a nonpublication request restricts publication 
of the patent application only up to the date of the issuance of a 
patent, and may be rescinded by the applicant at an earlier date.
    An alternative to preventing publication of a patent application is 
to expedite its prosecution, which reduces the time between disclosure 
and patent issuance. Prioritized examination, as authorized by Section 
11(h) of the Leahy-Smith America Invents Act, sets an aggregate time 
goal of 12 months for an application to reach final disposition, which 
may be a final rejection or an allowance of the claims. By submitting a 
request upon filing the patent application, accompanied by the proper 
fees, a patent applicant may potentially receive an issued patent prior 
to the 18-month publication date.

2. Scope of Requested Comments

    The Subcommittee has raised the concern of a potential risk of loss 
of competitive advantage during the period of time between publication 
and patent grant. Taking into account the current procedures through 
which an applicant may elect to defer publication of a patent 
application until patent issuance or expedite its prosecution, this 
Notice seeks to obtain feedback on whether the United States Government 
should institute a new regulatory scheme, modeled from that applied to 
national security concerns. This new procedure would institute a 
secrecy order that forbids applicants from disclosing subject matter 
deemed to be detrimental to national economic security for such period 
as the national interest requires.
    Interested members of the public are invited to submit written 
comments on issues that they believe relevant to whether, and under 
what circumstances, the United States should extend the current 
framework for placing patent applications under an order of secrecy to 
establish an additional screening program based on economic factors. 
The USPTO has not taken a position, nor is it predisposed to any 
particular views, on the following questions.
    Comments on one or more of the following would be helpful:

Questions on Economic Security-Based Secrecy Orders

    1. Should the USPTO institute a plan to identify patent 
applications relating to critical technologies or technologies 
important to the United States economy to be placed under secrecy 
orders?
    2. Which governmental body should be designated by the President to 
provide the USPTO with the final determination as to which applications 
should receive this treatment?
    3. Which mechanisms should a governmental body use, at the time a 
patent application is filed, to determine that publication at 18-months 
of that particular application would be detrimental to national 
economic security?
    4. What criteria should be used in determining that dissemination 
of a patent application would be detrimental to national economic 
security such that an application should be placed under a secrecy 
order?
    5. Would regulations authorizing economic secrecy orders be covered 
by the current statutory authority provided to the USPTO, or would such 
orders require a new statutory framework?
    6. What would be the effect of establishing a new regulatory scheme 
based on economic security on businesses, industries, and the economy?
    7. How could Government agencies best perform such a determination 
while remaining in compliance with applicable laws and treaty 
obligations?
    8. How would such a policy affect the public notice function that 
underlies the policy of publication, including the ability of United 
States inventors and innovators to timely access the newest technical 
information upon which to build and stay ahead?
    9. What would be the impact on United States innovators, companies, 
and employers? How would such a secrecy order affect United States 
businesses that currently have substantial business operations or sales 
in foreign countries?
    10. Are the procedures currently available before the USPTO, such 
as nonpublication requests and prioritized examination, sufficient to 
minimize risks to applicants and allay concerns with 18-month 
publication of their invention? If not, why?
    11. What are the risks that an economic secrecy order regime would 
influence other nations to implement similar laws? Would the global 
implementation of an economic secrecy order regime benefit or hinder 
the

[[Page 23665]]

progress of innovation in the United States?
    12. How would such a secrecy order regime affect international 
efforts toward a more harmonized patent system?
    13. Should the USPTO consider limiting what is published at 18 
months?
    This Notice also poses the following questions to determine the 
adequacy of the criteria used to place various technologies under 
secrecy orders for national security reasons.

Questions on National Security-Based Secrecy Orders

    14. How should criteria currently used by United States defense 
agencies to screen patent applications for potential national security-
based secrecy orders pursuant to 35 U.S.C. 181 properly encompass the 
scope of invention, which may have a bearing on ensuring the United 
States maintains its technical advantages in defense-related fields?
    15. Are there examples where technologies that could relate to 
United States defense capabilities that were excluded from 
consideration for a secrecy order?
    16. What is the competitive cost to expanding the scope of the 
criteria used to screen applications for security order consideration?
    17. Among patent practitioners, is there a common practice of 
attempting to avoid consideration for a secrecy order by drafting the 
patent disclosure in such a way as to not raise national security 
implications of an invention?

    Dated: April 16, 2012.
David J. Kappos,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 2012-9503 Filed 4-19-12; 8:45 am]
BILLING CODE 3510-16-P