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delegated by directive to the Secretaries of each of the military departments. They in turn have redelegated their authority to their respective sections of the ASPAB. The ASPAB is composed of an Army section, a Navy section, and an Air Force section. Each section comprises four members and a similar number of alternates. The ASPAB elects its Chairman. The ASPAB is under the management control of the Department of the Army, which furnishes the Secretary of the ASPAB. The three men with me represent the three sections of the Board.
When the ASPAB was created, the National Security Agency was not in existence. It has therefore not been represented in ASPAB membership. The Office of the Judge Advocate General of the Army has acted on behalf of the agency.
The ASPAB represents the Secretary of Defense in the secrecy order process. Recommendations to impose, modify, renew, or rescind secrecy orders are made by members of the ASPAB to the Secretary of the ASPAB. The ASPAB Secretary then transmits the official recommendation of the Board to the Commissioner of Patents and Trademarks.
When a secrecy order is imposed, the PTO continues to examine the patent application in a routine manner, using special patent examiners who have security clearances. The patent applicant and his representatives are cautioned against disclosure of the contents of the application to new persons. When the normal examination results in a determination that the application is in "condition for allowance" to be issued as a patent, further action on the patent application is held in abeyance until the secrecy order is rescinded. Secrecy orders are imposed on three basic categories of patent applications which have been filed in the PTO.
The first category includes those applications in which the Government has a property interest. This would 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. It also includes inventions made by Government contractors during performance of their contractual duties. When the Government has a property interest in an application, the security classification of the patent application document determines whether it should be placed under secrecy order. If a patent application is properly classified under the provisions of Executive Order 12065, then disclosure of the contents of the application would clearly be detrimental to national security. Such applications are prepared with appropriate classification markings. It follows that such patent applications must be placed under secrecy order.
The military departments initiate the imposition of secrecy orders on patent applications in which the Government has a property interest, without any preliminary action by the PTO. At some time during early stages of patent prosecution, the military department prosecuting the application or monitoring the contract submits a request to the Secretary of the ASPAB, who transmits to the Commissioner of Patents and Trademarks the ASPAB recommendation to impose a secrecy order on the application.
A second major category includes patent applications filed by foreign applicants, which have been placed under secrecy order in
the applicants' home countries. Under bilateral agreements with a number of allied countries or the multilateral agreement with members of the North Atlantic Treaty Organization, there is a procedure for mutual filing of patent applications which have been placed under secrecy orders. In each of these countries, there is a secrecy order system, similar to that existing in the United States. When the country of origin has determined that a patent application can be filed in the United States provided the application is maintained under secrecy, the patent application is forwarded through diplomatic channels to the applicant's representatives in the United States for preparation of a U.S. patent application. The ASPAB arranges for such representatives to receive industrial security clearance for handling classified information. When such an application has been filed in the United States PTO, it will normally bear security markings identifying the security status imposed by the government-of-origin. These foreign applications may be government-owned or, as is more likely the case, privately owned. Upon the request of the government-of-origin or the individual applicant, the Secretary of the ASPAB transmits to the Commissioner a recommendation to impose a secrecy order in compliance with the international agreements. This category makes up approximately one-fourth of the ASPAB-sponsored secrecy orders.
The third category of patent application with which the ASPAB is concerned produces the smallest number of secrecy orders but creates the greatest problem as far as the public view of invention secrecy is concerned. This category comprises patent applications in which the Government has no property interest, which are filed by corporations or private individuals.
The ASPAB has provided the PTO with a Patent Security Category Review List. This document is classified, and a copy has been provided to this committee separately. Certain categories of inventions have been identified on the list as being of interest to particular military departments or subdivisions thereof. When a patent application which does not contain classified markings or other indication of a government property interest is received by the PTO, it is screened by patent examiners for comparison with the ASPAB list. If the subject matter of the application appears to correspond to an item on the list, a microfiche of the patent application is prepared and sent to each military department which has indicated an interest in that particular category of subject matter. Within the department, the single microfiche may be circulated to one or more offices. The application is forwarded to individuals having technical expertise in a particular area for a determination whether the publication or disclosure of the information in the application would be detrimental to the national security. Each individual who reviews the patent application must sign an access acknowledgement sheet, which becomes part of the official PTO
Publication or disclosure of a patent application may be determined to be detrimental to national security either because of the claimed subject matter of the invention or because of other matters contained in the patent application. That is, an inventor may have devised a new explosive device or guidance system which in itself would have been classified had it been generated by military de
partment research, and mere disclosure of the invention details could be injurious. In another case, disclosure of a particular invention may not itself be objectionable, but the portion of the application discussing the use of the invention may incidentally describe the method of operation of a weapons system, where the publication of those details would be detrimental to national security. This is somewhat common where the invention has been made by inventors who have worked in other situations with classified government information.
The military departments conducted a total of 4,479 reviews of newly filed, privately owned patent applications during fiscal year 1979. Some applications were reviewed by a single department. Others were reviewed by two or three departments, depending on the technology involved. A total of 227 secrecy orders were imposed as a result of ASPAB activity during fiscal year 1979; this was the total number of secrecy orders imposed in all three categories of inventions. The greatest number of applications were those in which the Government has a property interest. Approximately 25 percent of the secrecy orders involved foreign-origin cases. The Commissioners of Patents and Trademarks has estimated at different times that approximately 10 to 20 percent of secrecy orders are imposed on cases in which the Government has no property interest.
Incidentally a recent check with the Patent Office indicated that the figure is closer to 20 percent.
The time required to review a patent application includes the time involved in initial screening by the PTO as well as the time involved in actual review by the defense agencies. Attached is a chart indicating the percentage of cases which are 3 to 6 months old when received initially from the PTO and the percentage which are more than 6 months old. For these cases, it is unlikely, and in some cases impossible for the defense agencies to complete their review and impose a secrecy order within 6 months. This 6-month time limit is critical in the case of foreign patent applications filed by U.S. inventors. Unless the inventor has had a U.S. patent application on file in the PTO for at least 6 months, he cannot file a foreign patent application relating to the invention without first obtaining a foreign-filing license from the Commissioner. See section 184. After he has had the application on file for 6 months, he can file anywhere in the world without any further permission, unless a secrecy order has previously been imposed. If the defense agencies have not had time to review the application under the normal review process, the applicant is allowed to file patent applications in any foreign country. Such filing, with its attendant publication during the process of granting the foreign patent, may be detrimental to the national security.
The administrative problem has been brought to the attention of the PTO, which is trying to reduce this consumption of time. If that delay is not reduced substantially or the 6-month provision is not increased to reflect administrative realities, there could be a serious injury to the national security because of the inability of the defense agencies to cause a secrecy order to be imposed on
The sponsoring military departments have procedures for review of secrecy orders to determine whether the order can be rescinded. During fiscal year 1979, secrecy orders were rescinded on 419 applications. There has been a steady downward trend in the total number of secrecy orders in effect during recent years.
With the advent of the National Emergencies Act-90 Stat. 1244, Public Law 94-412-effective March 14, 1979, it became necessary to review all secrecy orders on an annual basis for potential renewal. Annual review has continued on a regular basis. Under the annual review procedure, the rescission rate has continued to be higher than the imposition rate. Approximately 2,200 cases were under ASPAB-sponsored secrecy orders at the end of fiscal year 1979. Thus, there were about 2,200 annual reviews during the year. When a sponsor determines, as a result of either annual or other review of a secrecy order, that an application no longer needs to be maintained under secrecy order, rescission of the secrecy order is recommended. Under the ASPAB charter, the patent application must then be circulated among the other ASPAB members for their individual consideration whether the secrecy order should be rescinded. If another department desires continuance of the secrecy order, that ASPAB member assumes sponsorship of the secrecy order. This occurs on occasion, particularly when the different departments are involved in different areas of research regarding defense systems. When each member has agreed to rescission of the secrecy order, the Patent and Trademark Office is notified accordingly, and the secrecy order is rescinded.
If the case is a foreign-origin case, the recommendation for rescission will normally come from the foreign government. Under the several international agreements, both the originating government and the receiving government normally must concur in order to permit rescission of the secrecy order on a foreign-origin application.
An applicant whose application has been put under secrecy order is permitted under the rules of the Patent and Trademark Office, to apply for a modification of the secrecy order. Such modifications may include permission to make disclosure of the contents of the application to certain categories of individuals or permission to file identical applications in selected foreign countries. Such requests are reviewed by the agencies to determine whether the requests should be granted. If a patent application is to be filed in a country which is obligated by agreement to maintain it under secrecy, it would be fairly common to permit such foreign filing. Permits to allow disclosure of the invention to representatives of the Government for potential marketing of the invention are routinely granted at the time of imposition of the secrecy order.
Under the statute, an applicant whose patent has been withheld by reason of a secrecy order can file an administrative claim against the military department which caused the order to be issued. The claim can be based on the damages caused by the imposition of the order and on use of the invention by the Government resulting from the applicant's disclosure. The ASPAB is not directly involved in processing of administrative claims. Such claims are filed with the particular department which requested imposition of the secrecy order. Most of the ASPAB members are
assigned to the same offices which process the administrative claims, and they become involved in such claims as a result of their other duties. A list of claims involving the military departments in which damages caused by a secrecy order have been in issue was previously forwarded to this committee.
The chairman's letter of August 12, inviting this testimony, posed several specific questions. Specific responses to those questions are set forth in the attachment which I will read.
Question. What role does the Central Intelligence Agency play in implementation of the Invention Secrecy Act (ISA)?
Response. It is a government agency within the provisions of the first paragraph of section 181 and the following sections.
Mr. PREYER. If I might interrupt, Mr. Sciascia, we do have a vote on the floor, and I would like to recess for about 10 minutes. Does the committee feel that it is essential for him to read the questions and answers into the record here? I do not believe it is necessary for you to do that. We may have some questions to expand a little further on some of those questions and answers. We appreciate your testimony.
[Mr. Sciascia's prepared statement and submissions to subcommittee questions follow:]