Page images
PDF
EPUB

PROVIDING FOR TIIE WITHHOLDING OF CERTAIX PATEXTS

7

will grant to the Government a permanent right which is possessed los many forvign countries in dealing with their patouts.

1.1. Col. Willard J. Todges, Jr., costilicil before thic Subcommittcc on Pitonls on cugust 21, 1951, thirt:it is believed essenti::l that there exist in this country law's which will permit ::

siis inventor turile an applic:liou in he: limiter states lateni. Oflice and have --Reloppliersion placed under an order vi screer. In order to fulfill this Sation's

y oblications. reap the full bereits of such joint mertakings, the enacttuul of thi- legislation is required.

Although this may prevent a person who liest applies for a patent in the United States Troin ilsiuiling himself of the 1:3-monih priority period afforded by article 4 of the International Convention for thic Protection of Industrial Property with respect to inventions kept secret mler oriler of the Secretary of Commerce, the executive department Tunsors this bill because of its importance in national defense anii loccause the bill is believed to utiain its objective in a reasonable sunner. Furthermore, if the bilateral agreements which the country is presently executing with the North llantic Treaty countries are consummate, it is anticipated that classified information irill be wordded the same tiegree of security in certain other countries as we propose for this country in this bill. Accordingly, as a practical inalter, the inventor will probably be permitteil in most instances 10 lile on npplication in those countries to avail himself of the 12-month priority period despite the secret nature of the invention.

Basically, the bill cloes not make changes in existing law with respeet 10) its administration. Since the passage of Public L:w.700, it has bren administered in close cooperation with the defense agencies. The examiners of the Patent Ollice submit applications to the Patcut Ollice Defense Division to determine whether vier disclose inventions important to defense, and thic Secretary of Defense has appointed a Patent Advisory Board to consult with the Division and assist in the determination of the applications which should be maintained in scerecy. If enacted, the Defense Dep:urtment woull continue to have access to pending patent applications selected by the Secretary of Commerce which in bis (liscretion would be detrimental 10 thc national security is disclosed.

CuaxGES IN EXISTING LIW In compliar with canca of rude XII of thn llouse of Representirtives, there is priniert betuw in romii existing laws with mulier proposed to be stricke out enclosed in blixck brackeisiind new millier proposed shown in italic. The bill as amended by the committee is set forth after the proposed matter: As act of Congress ArriOVE:1) JULY 1, 19:0 (Pus:l.se low lo.700, Tatil Cosc.) [Thal tlic Act of Congress approved Ocealer (i, 1917 (10) stat. 3991, c. 95, U.S.C., tiile 35, sec. 12), b: 2011(elect to read is (ollosis:

"Whenever the publication or iliselusure of itn in vrtition: hoy the granting of a frill might, in the opinion of 11:0 (0:11-sioner af listenils, ixc eletriminalis the public sticly or closcnse lie milk order that the invention is kept secret and uitlilokl 11:: grant of :-parasit for such pasient ook pesimuis ils in luis opinion dico national interest requires: l'romet, TH:21 1 in Vettiin viralling the :pplication for sovit priftsit my be dac!e ::)openingstone is beirtixb!i-test before or buyilico (omissioner thai in violinston of id oriler ilin sentere bira lucruri poroblishid or di-educe or host an pplication for it potent therefor insis Leon lile l'in : lurrin (* Hits by the 110plier or his

ins er local report 11:10 sess, without the corMolt ur : promo of the Commissioner vi 1::/6814.

8

PROVIDING FOR THE WITIIHOLDING OF CERTAIN PATENTS

"When an applicant whose patent is withheld as licrein provided to faithfully obeys the order of the Commissioner of Patents abovc rcernus... (onder his invention to the Government of the United States for its lise, le if and when he ullim::!ely receives a patent, linve the right to sile for rent tion in the Court of Claims, such right to compensation to begin iron thu.. the use of the invention try the Government: Prociricu, That the Sierros W'ar or the Secretary of the Navy or the cluici ollicer of any established... agency of the United States, as the case may br, is cuthorized to cater .. agreeinent with the saill applicant in full settlement and compromis for danase accruing to him by reason of the order of sucrecy, and for the use invention by the Civierwieht."

Sec. 2. This Ist shall take offect on approval and shall reinain in force fun! period of two years from such c21c.] Ax Act op Coxaness Aerovi.D June 16, 1942 (Pueric Law 239, 77'ru lins. [That the Act of Congress approved July 1, 1940 (Public. Vumbered 700, SO. sixth Congress, third-*-0. cb. 501), we amended by adding thic following series

"Sxc. 3. No person shall tile or cause or authorize to be filecl in any for country an application for parent or for the registration of a utility modlit. ;dustrial design, or mocht in respect of any invention made in the limited States except when authorizeri in catch casc hy a license obtained from the Commissi; of l’ntents ander such rules and regulations as he shall prescribe.

"Sec. f. Notwithstanding the provisions of sections 1S$6 and 4357 of me Revised Statiles (3.; l.s. (... scos, 31 and 32), any person and the successor assigns, or legal representatiros of any such person shall be detrarred from rec: a l'nited States patent for an invention is such person, or such successors, itxviin or legal representatives siiall. without procurile the authorization preseries! :section 3 hicroui, hare madle or consented to or assisted another's making appos cation in a foreign country for a patent or for the registration of a utility monsi industrial design, or model in respect of such invention where authorization..... such application is required by thic provisions of sociion 3, 2011 any such liitto States patent actually issued to any such personi, successors. assigns or legal representatives so dcbarred or la cuming debarred shall be invalid.)

[ Sec. 5. Whoever, during the period or periods of tiine an invention has lume ordered to be kept secret and the grant of a patent thercon withheld pursuant to the Act approved July 1, 1910 (l'ublic, Yumbera 700, Seventy-sixth Cungtis. third session, ch. 501), .::!!, with knowledge of such orrlcr and without authorization, willfully publish or disclose or authorize or cause to be publislielo disclosed such invcutivli, or any matcrial inforination with respect there ! whoever, in violation of the provisions of section 3 hereof, shall file or canises authorize to be filed in any forrign country an application for patent or fort! ro'kistration of a utility mull, imurial design, or model in respect of any inven: tion made in the United States, shall, upon conviction, he fincd not more than $10,000 or imprisoned for 11:54. more than iwo years, or both.

"Src. 6. II any provision of this ilet or of any scorion thercor or the applications of steh povijis in all frfse!} or vicemisi:nces sha!! lic lielai invalil, !!.« **** inginer of the ilet:nebo sprcction and application of such provision of or circunstances other than those as lu whiclı it is hield invalid shall not be allertal thereby.

"SEC. 7. Is used in this rl

"The term 'person' inelules any individual, trustce, corporation, partnerships. association, firm, or rx niher convination or individuals.

"The term 'applicatio:i' includes :1plications, and any inodifications, :2numrlo monts, or supplements llicreto or continen:ence's thereof.

"SEC. 8. The probuditione illud perties of this set shall not apply to all! ollicer or agent op 11 liruisced States acting within the scope of his authority."

Sxc. 2. This let stall take offer thirty days niter its approvni.] AK or Concress ArthVE1) JUNE 10, 1912 (P11:1.10 L. IV 60!), 77th Cos:: Irint section ? of th...ict of Congress approved July 1, 1910 (l'oblie, Mirosla pred 700, .5.1 lity-sixth fingeros, liril session.ih, 101), !Cruceri in real as lellus:

"S... This real listir cffcct 01:29 porvall :11. Domether with the provincial of the let of 15464?!, ill. llublie !:2 23!!. Sorenti-seureuth Centras, 1.7.! session, cl, 393), -::10:01:11 in curte cuins the living when the United States in at war.")

IXTEYTION SECRECY ACT OF 1931

INVENTION SECRECY ACT OF 1951

For test of 20+ see p. 1.

Senate Report No. 1001, Oct. 16, 1951 (To accompany H.R. 4687) House Report No. 1028, Sept. 24, 1951 [To accompany H.R. 4687) The Senate Report repeats in substance the House Report.

Sencte Report No. 1001 The Committee on the Judiciary, io which was referred the bill (H.R. 4687) to provide for the withholding of certain patents that mighi be detrimental to the national securiiy, and for other purposes, having coii-' sidered the same, reports favorably thereon, without amendment; and reco ommends that the bill do passo

PURPOSE The purpose of the proposed legislation is to provide for the withhold. ing of ceriuin patents that might be detrimental to the national security.

Pan

STATEMENT The facts relating to this bill and the justification, thereof appear in House Report No. 1023, Eghty-second Congress, first session, which is herein set forth.

The present bill ts substituted for 2.R. 4687. Fearings were held on the present bill oa August 21, 1951. 4.2. 4637 is largely H.R. 6389. with minor amendments resulting from the suggestions of industry representatives acceptable to the Department of Defense which are in-. tended to make the bill mce equitable, and amendments relating to form. . Hearings were also held on H.R.: 6389 in the Eighty-årst Congress. In view of further amendments, it is desired to report, the bill in its new forma. This will changes the temporary act of Congress now. in forca lato permazent lawy, with several charges recognized as desira able as a result of experience under the temporary law and problems anticipated under a permanent lav.

The act of October 6. 1917 (40 Stal 394. ch. 35; 33 U.S.C. 42) 2116 thorized the Commissioner of Patents io withhold iron issue patents or invertions important to the national defense during wartima. On July 1, 1940, Public Law 100 was ens :ted to make the movisioc of the ais of October 6, 1917, effective ior: years despite in ct that the United Stales was not at war. This ac ion was decided upon by the Congress because it was appareat that the national interest was endangered by the publication of certain patents. Io 1942, Public Law 609 was enacted to keep Public Law 700 in effect during World War II. In 1941, the act was further amended by Public Lair 239 to prohibit the slips of foreign patent applications without the license of the Commissioner of Patents and to provide penalties for the viclation of the act.

The temporary act, as amended, remains ia lorce duriag the time when the United States is at war and will cease to be in effect upon the oticial termination of the war. The purpose of the proposed bill is to gani tba Secretary of Commerce, under certis conditions, the authority to keep inventioes secret 23+ to ithhold isso? 0! 22:9.15 vien tecessary for the oational security. According to the Defense Department, it is important to the national deiease that the issuance of parents resulting

[ocr errors]

from research and deniopment sponsoreil !! ::.- armeri s-skies and others rlatins la classino maliers !»! 1tbroke !! ;rine in hic! tho publication of such matiera may iroprio il tin: indos... T! applications in the latent Oliica, which ixrc presrutiy lwin rithibo.bod from issuauce under Public Larian wil iç issiteci as por!?145 Vlor llir collicial termination of the xa: unless Icgislation to prerent this is enacınd. Accordiaçly, the incinence of the declaration by the Congress of the end of the war with Germany and the sizning ni the Japaeese Peace Treaty places this bill in the class of urgent legislation.

An important difference between this bill anrl Public L27:00 Is tha: this bill sets up two groups of patent applications haand upon miether

the Gorernment has a property interest in the invention. If the Goreraiment has a property interest, issuance of a secrecy order requires only a

recommendation to the Commissioner of Patents. by ibe head of the. department or agency involved. The plirase "property interest" is intended to include the ownership of all rights in the ia reption or to a lesser interest therein such as, for example, cases where the foreiga

rights are retained by the inventor, or where the Government is entitled :: only to the interest of one or more joint inventors, and cot to the interest

of all the joint inrentors. This group will consist in the wain of in- . ventions made by Government employees or Government contractors, . IQ the other group, the Secretary of Coinmerce informs the heads of the defense agencies oi pateat applications those disclosure" Dright be detrimental to the national security. This group consists for the most part of inventions made by persons not in contact with the Government It is necessary for the Seccatary of Commerce to call the allenuion ut the defeasa agency to the particular application, since they would otherwise hare no knowledge of such application. The 'opinion of the insense agency concerned 13. controllies zod the order that the invention be kept secret will be made pursuant thereto. The period o: secrecy is 1 year, or for the duration of a national emergency declared by the President and 6 moaths thereafter, or for the duration of hostilities and 1 year following cessation of hostilities. The 1-year perioci may be renewed or the secrecy ciassification canceled upon proper cctification of the Secretary of Connerce. Under Public Lazy 100; a secrecy order remains in force until rescinded.

Public Law 700 makes no prorision for appeal from the secrecy order. This Sill gives the owner ol a patent application placed under . secreer order the right to appeal from the order to the Secretary ol. Commerce. This amendment is for the protection of persons aliected by the secrecy order.

A further amendment to section I provides that,

"Upon-proper showing by the head of the department or agency who caused the secrecy order to be issued that the examination of the appiication right jeopardize the national interesi. the Secretary of Pommerce shall thereupon maintain the application in a sealed condition."

The armed services procurement application provides that they migas prohibit the filing of a patent application r'. I discloses writer whic:. has been classified as secret. Govero:nent cractors may thereby be deprived of a property right because they cannot obtain an early filias date on such patent application. The classiäcation is usually reduced and fling permitted at a much later date. The (!se of the invention for 1 year or more during this period of alin. prohibition may prevent the exercise of the filing privilege. Moreover, this act is effectii : for compensation purposes only after the fiiing oi aa application. Ii ile contractor is not perniitted to file, he cannot obtain any benefits under tile act. It is believed ihat the authority to seal the application by tbe Secretary of Commerce would reduce ihe cecessity to probibit the filing of a classified application.

Section 1 also includes the followin, amendmenti:

"Each isolividus:: :9 ICN the application is liselos || sis : Jatoi ar kon siemelli thermoc, whicit acknowledgmeni all ic colerici in tlic üilc of the pplication."

INVICTION SKORACYJCT OF 19.71

This is to provide crilence of an examination of ... application by other than Parcni orice personori. This would establish thn (ain of examination if the application becomes in rolved in an interesooco prococoing with a Gorernment-ownerl application and it let also establish 11:2 person who axanıineel it. In lims or conreency, industry exportachler Government scrrico for a short period and they onay be the rica Assigsed to examine such applications. They may be employer 5 civilians by a competing company. It is important lo establish the fact that the had seen the application in the event that a controversy develops later on.

Section 2 provides that an invention disclosed in an application subject to a secrecy order shall be held abandoned. it. in violation of che order, such invention is publicized or disclosed or bled io a loreign country frithout consent. The eflective date of the abandonnert is the date of the violatioa.

Section 3 differs from Public Lais 700 milh rasprct to compensation payable to the owner of an application under a secrecy orrior lik, Public Lav 700. however, it provides for compensalion for damages caused by the order of secrecy for governmental use. Section 3 prescribes a

6-year statute of liquitations. It does not require tendier ol the latention : to the Government precedent lo recovery of compensation, nor does it

defer presentation of a claim for compensation until after a patent issues on the application. It authorizes the head of a department who caused the secrecy order to be issued to make full settlement or if that cannot be effected, 2 settlement not exceeding 75 percent of 2 just compensatioa. The owner who fails to secure a satisfactory award or who does not apply for compensation may bring suit in the Court of Claicos. · The 6-year: statute of Imitations is incorporated to preciude the collection of old claims t:on the Government, and conforms with the statute of limitations on suits in the Court ot Claims. Under Public Lav 700, no statura of Ilmitations mag provided for the collection of outstanding claims for 20. unreasonable length of time. :

Sectioa 4. prohibits the 9110% in a fore!ga country of an application for patent prior to 6 months after Aliom an application in the United States. unless a license is first obtained froа the Secretary of Commerce. This is to prevent sling abroad beiore the Secretary of Commerce has had an opportunity to examine the application. The 6-month period will also give the departments concerned an opportunity to examine the application. Under Public Law 700, a foreign fuos was not permitted unless author...ized by the Government.

The provisions Ol sections 5 and 6 ara substantially the same proria sions as section 4. Public Law 700, and section 5. Public Latv 239. Seclion 5 provides that a person who files a foreign application without license shall not receive a. patent and section 6 incorporates. penalty proFisions into the act..

Section 7 like section 8 of Public Law 233 provides that the prohibi. tions and peculties of the act shall not appli to nicers or agents of the United States acting within the scope of their i s.

Section 8 authorizes the Atomic Energy Comission, a Secretary of a Defense Departmeni. or tbe chief officer of any other department desigDated by the President as a defense agency, and the Secretary of Commerce to separately issue rules and regulations to administer the aci.

Section 9 constitutes à saving provisioa similar to section 6 of Public Law 233.

Section 10 repeals the acts of 1917, 1941, and 19:12 but continues the action taken as to secrecy orders in effect on the date of approval of :his bill.

Section 11 provides that the Atomic Energy Act of 1946. will not be affected by this act and section 12 sets forth the title of the act.

The necessity for enscting the existing 174 in perioni forn is coire sideres cxtrcinely iinportant by the Departident of Defense. Vore.over. tbere appears to be general approval ol the purpose of the bill. mirna tlous useiul in war are made and vercloped during times of perico ind

« PreviousContinue »