Regulatory: Patent office secrecy orders for commercial inventions may stifle development

Some may argue secrecy orders are protecting national security

In 1999, Congress passed the American Inventors Protection Act (AIPA), which provided, among other provisions, that U.S. patent applications would be published 18 months after filing. This provision was designed to bring the U.S. patent process into harmonization with patent procedures in other major world markets, including Europe and Japan. It was also said to be necessary in order to prevent inventors from intentionally delaying issuance of patents until markets developed, a scheme often described as “submarine” patenting.

One issue that has arisen as a result of the 18 month publication provision is that inventions are published long before enforceable patents are issued by the U.S. Patent Office (PTO). The average pendency of a U.S. patent application was 33.7 months in 2011. As a result, on average, there was a 15.7 month gap between worldwide disclosure of the invention and the issuance of enforceable patent rights protecting that invention.

On April 20, 2012, the PTO requested comments on the proposal to screen patent applications for economic security effects. Industry organizations, patent attorney organizations, companies and universities responded. The comments were overwhelmingly negative, although there were some supporters of the concept. It was pointed out that economic secrecy orders would significantly impair the commercialization of the product. Such rules would have the perverse effect of more seriously impacting the most valuable and widespread technologies. Multiple commentators pointed out the rules would hamstring U.S. interests in the global marketplace because patent filing and disclosure outside the U.S. would be prevented or limited.

One purpose of the patent system is to encourage disclosure of inventions in exchange for the issuance of patent rights which are limited in time. Inventors faced with the possibility of having valuable rights locked up by a secrecy order would be more likely to simply maintain their technology as a trade secret. This would be a detriment to technology development and undercut a key purpose of the patent system.

Contributing Author

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Craig Metcalf

Craig Metcalf is a Shareholder with Kirton McConkie. His practice emphasizes intellectual property and appeals as well as mediation and arbitration. He can be reached...

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