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rights available under patent law section 261.
The secret part
is used for recordings when neither the record itself or
index card can be made public without jeopardizing national
security. The agency seeking registration, not the office, decides in which part a governmental interest will be recorded.
Questions Raised by the Subcommittee
The first question asks about the effect of the 1976 National
Emergencies Act on the Office's implementation of the Invention
With enactment of the National Emergencies Act, all existing
emergencies were considered terminated for the purposes of the
patent law's secrecy order provisions.
The Office was accordingly
required to apply the "peacetime" provisions of section 181 in lieu of the national emergency provisions. Of course, the "wartime"
provisions did not apply at that time.
During a national emergency, or war, section 181 requires secrecy
orders to be issued for their duration and for a specified period
Exactly the opposite is true under the section's
Under the "peacetime" provisions, each secrecy order must be reviewed annually to assure that the national interest justifies
This annual review determines whether or not the order is
to be renewed.
The National Emergencies Act became effective on
September 14, 1978 and terminated the national emergency declared
by President Truman in 1950. The transitional provisions of
section 181 implementing this Act required the defense agencies
to affirmatively determine for each patent application subject
to a secrecy order the need for continuing that order.
Office received a written notice of each determination by the
defense agencies and, in turn, issued any needed notices of
The review of these outstanding secrecy orders during
this transitional period (from September 14, 1978 to March 14,
1979) resulted in 3,300 renewals.
A national emergency was in effect from December of 1950 to
March of 1979, and secrecy orders for patent applications did
not need annual reviewing for that entire period.
each secrecy order would have been subject to annual review.
Patent applicants, however, are not forced to await the results
of an annual review to have their applications declassified and
secrecy orders removed or modified.
If an applicant requests
the rescinding of a secrecy order in his application, a review is automatically initiated. In July of 1974, our Office requested
each defense agency to review secrecy orders in effect for more
than twelve years.
This review program lasted until the National
Emergencies Act took effect in 1979.
The second question asks about the security operations of
the Department of Justice as a "defense agency".
was designated a defense agency for the purposes of 35 U.S.C.
181 under Executive Order 10457, of May 27, 1953.
To date, the
Department of Justice has not informed us of any fields of national security interest in connection with patent applications. We would, of course, make any application available to that Department on its request, without imposing criteria of our own for doing
The Justice Department would be treated like any other
Your third question asks about the relationship between
secrecy orders and our appeal procedures for finally-rejected patent applications. You specifically refer to section 5.3(a) of Chapter 37, Code of Federal Regulations. This section states
that appeals will not be set for hearing by the Board of Appeals
until the secrecy order is removed or unless otherwise specifically
ordered by the Commissioner.
Although there is no specific statutory authority for this regu
lation, it has been promulgated under the Commissioner's general
administrative authority (35 U.S.c. 6) for several important
Until recently, few members of the Office's Board of
Appeals and its supporting staff possessed the requisite security
clearances for handling these appealed cases.
The same is true
of the judges, officers and staffs of courts that review decisions
of the Office's Board of Appeals.
Also, most applications under secrecy orders are related to
reluctant to disseminate classified information to a wide range
of persons, even if they have security clearances.
Nor can a patent issue unless the secrecy order is rescinded.
funds in pursuit of a procedure that could not culminate in the
prompt issuance of a patent.
Of course, 37 CFR 5.3(a) is worded so that a sufficiently important
appeal hearing can be ordered by the Commissioner, if the applicant petitions for it. For instance, a delay in the appeal
proceeding may prejudice the right to compensation.
a case, the appeal may be heard.
To my knowledge, however, the
only requests for these appeals have been filed by defense agencies
for Government- owned and prosecuted cases.
If an appeal hearing
were ordered by the Commissioner and the invention found unpatentable, the application, absent further appeal to the appropriate court,
would be considered abandoned.
Each secrecy order, however,
remains in effect until rescinded or lapsed whether or not the
application is abandoned.
(4) Question four asks about the seeming inconsistency between the statutory authority to appeal a secrecy order to the Secretary
of Commerce and the CFR's implementing regulations interposing the condition that the applicant's appeal must be first taken to the Commissioner of Patents and Trademarks.
There is really no inconsistency. The right of appeal to the
It certainly is in the best interests of national defense and the applicant himself to have an appeal heard and decided at the lowest qualified administrative level. The applicant is assured that a decision on his petition for removal of secrecy order will be decided by persons most knowledgeable in a prompt, efficient,
and economical manner.
The Secretary of Commerce will then have
their advice if he later must decide the matter.
(5) The fifth question asks about the form of the secrecy order and why it does not identify the agency requesting it. The
question goes on to ask how and when the applicant learns the
identity of the agency requesting the order, and whether or not
are considering a revised form identifying the agency.
The vast majority of patent applications subject to secrecy orders already contain classification markings when filed in the