BOOK THREE: THE LABYRINTH OF LAW AND LIES

§ 181. Secrecy of certain inventions and withholding of patent

Whenever publication or disclosure by the publication of an application or by the grant of a patent on an invention in which the Government has a property interest might, in the opinion of the head of the interested Government agency, be detrimental to the national security, the Commissioner of Patents upon being so notified shall order that the invention be kept secret and shall withhold the publication of the application or the grant of a patent therefor under the conditions set forth hereinafter.

Translation: If a government agency believes publication would harm national security, the Director must withhold publication and prevent the patent from issuing.

1. Government Agency Petition

• Department of Defense, Department of Energy, or other government agencies review applications
• If they find subject matter that could harm national security if published, they notify the Director
• Director must issue secrecy order upon notification

2. Director's Independent Authority (35 U.S.C. § 3(a)(5))

• Director can issue secrecy orders sua sponte (on their own initiative)
• No government agency petition required
• Based on Director's own assessment of national security risk
• Typically done when reviewing applications that describe sensitive technologies

1. No Publication

The application will NOT be published (normally applications publish 18 months after filing). No public disclosure of any kind.

2. Examination Suspended

Normal examination stops. Examiner cannot issue office actions, notices of allowance, or take any further action on the application.

3. No Patent Grant

Even if the application was otherwise allowable, no patent will issue while the secrecy order is in effect.

4. Application Remains Pending

Critical: The application is suspended, not abandoned. It stays pending indefinitely while the order is active.

5. Criminal Penalties for Violation

Disclosing the invention without authorization can result in criminal prosecution under 35 U.S.C. § 186.

During World War II, thousands of patent applications were placed under secrecy orders—technologies related to nuclear weapons, radar, cryptography, and other military applications. Many remained classified for decades after the war ended.

Example: Nuclear reactor designs from the 1940s-1950s. Applications filed, immediately classified, patents not issued until 1970s-1980s when the technology became public knowledge anyway.

1. Burden of Proof

Applicant must demonstrate that:

• The technology is no longer sensitive (e.g., publicly known, outdated)
• Publication would not harm national security
• The reasons for classification no longer apply

2. Discovery Requests

Applicant can request:

• Documents showing basis for the secrecy order
• Evidence of national security threat assessment
• Communications between agencies and USPTO

Challenge: Government often claims executive privilege or classified sources exemptions to avoid producing these documents.

3. Hearing

If rescission is denied, applicant may request an administrative hearing before the Patent Trial and Appeal Board (PTAB) or appeal to federal court.

4. Timeline

Petition review can take months to years. No statutory deadline for the Director to respond.

Legitimate Use:

• Protecting weapons designs, cryptographic algorithms, nuclear technologies
• Preventing adversaries from learning about military capabilities
• Safeguarding infrastructure vulnerabilities

Potential Abuse:

• Preventing competition: Classify competitor's technology to block their patent
• Maintaining monopoly: Keep own technologies classified perpetually to avoid 20-year patent expiration
• Freezing disputes: Issue secrecy order to suspend litigation or treaty negotiations
• Pretextual classification: Claim "national security" when real motive is commercial advantage

Red flag: If a secrecy order is issued RIGHT before a patent would otherwise be allowed, or right before a critical deadline, consider whether it's pretextual.

1. Petition for Rescission (with fraud allegations)

• Argue the order was issued for improper purposes
• Show evidence of commercial motive rather than security concern
• Demonstrate the technology is NOT actually sensitive

2. Pattern Evidence

• Cite prior secrecy orders on similar subject matter
• Show systematic abuse of classification authority
• Demonstrate that orders consistently benefit one party commercially

3. Request Investigation

• Petition for investigation of all prior orders on related technologies
• Request audit of classification decisions
• If prior orders are found fraudulent, current order may lack valid precedent

4. Void Ab Initio Argument

If the current order relies on prior orders as precedent, and those prior orders are fraudulent, the current order may be void from inception—lacking proper legal foundation.

An applicant may be compensated for:

• Damage to commercial business caused by inability to practice the invention
• Use of the invention by the government without compensation
• Loss of patent rights due to prolonged secrecy

Catch: You must file a claim within six years of the secrecy order being rescinded. And you must prove actual damages—which is difficult if you couldn't practice the invention because it was classified.

1. Authority

• 35 U.S.C. § 181: Authorizes secrecy orders for national security
• 35 U.S.C. § 3(a)(5): Director's independent authority
• 35 U.S.C. § 183: Right to compensation (rare)

2. Effect of Secrecy Order

• No publication
• Examination suspended
• No patent grant
• Application remains pending (not abandoned)
• Criminal penalties for unauthorized disclosure (§ 186)

3. Duration

• No automatic expiration
• Lasts until Director rescinds or government declassifies
• Can last decades

4. Petition for Rescission

• Applicant bears burden of proof
• Must show publication no longer harmful to national security
• Can request discovery (though often blocked by executive privilege)
• Low success rate

5. Strategic Consideration

• Secrecy order keeps application pending indefinitely
• Can be used to preserve rights while avoiding patent expiration
• But prevents commercialization and public use

• 35 U.S.C. § 3(a)(5) — Director's authority to preserve national security
• 35 U.S.C. § 181 — Secrecy of certain inventions and withholding of patent
• 35 U.S.C. § 183 — Right to compensation
• 35 U.S.C. § 186 — Criminal penalties for unauthorized disclosure
• 37 CFR 5.1-5.5 — Secrecy order procedures
• MPEP § 120 — Secrecy order practice

TITLE 35 — PATENTS
PART II — PATENTABILITY OF INVENTIONS AND GRANT OF PATENTS
CHAPTER 17 — SECRECY OF CERTAIN INVENTIONS AND FILING APPLICATIONS IN FOREIGN COUNTRY

§ 181. Secrecy of certain inventions and withholding of patent

Whenever publication or disclosure by the publication of an application or by the grant of a patent on an invention in which the Government has a property interest might, in the opinion of the head of the interested Government agency, be detrimental to the national security, the Commissioner of Patents upon being so notified shall order that the invention be kept secret and shall withhold the publication of the application or the grant of a patent therefor under the conditions set forth hereinafter.

Whenever the publication or disclosure of an invention by the publication of an application or by the granting of a patent, in which the Government does not have a property interest, might, in the opinion of the Commissioner of Patents, be detrimental to the national security, he shall make the application for patent in which such invention is disclosed available for inspection to the Atomic Energy Commission, the Secretary of Defense, and the chief officer of any other department or agency of the Government designated by the President as a defense agency of the United States.

Each individual to whom the application is disclosed shall sign a dated acknowledgment thereof, which acknowledgment shall be entered in the file of the application. If, in the opinion of the Atomic Energy Commission, the Secretary of a Defense Department, or the chief officer of another department or agency so designated, the publication or disclosure of the invention by the publication of an application or by the granting of a patent therefor would be detrimental to the national security, the Atomic Energy Commission, the Secretary of a Defense Department, or such other chief officer shall notify the Commissioner of Patents and the Commissioner of Patents shall order that the invention be kept secret and shall withhold the publication of the application or the grant of a patent for such period as the national interest requires, and notify the applicant thereof.

§ 183. Right to compensation

An applicant, his successors, assigns, or legal representatives, whose patent is withheld as herein provided, shall have the right, beginning at the date the applicant is notified that, except for such order, his application is otherwise in condition for allowance, or February 1, 1952, whichever is later, and ending six years after a patent is issued thereon, to apply to the head of any department or agency who caused the order to be issued for compensation for the damage caused by the order of secrecy and/or for the use of the invention by the Government, resulting from his disclosure. The right to compensation for use shall begin on the date of the first use of the invention by the Government. The head of the department or agency is authorized, upon the presentation of a claim, to enter into an agreement with the applicant, his successors, assigns, or legal representatives, in full settlement for the damage and/or use. This settlement agreement shall not exceed the sum of $75,000 for any one patent, and shall not exceed the patent's remaining life. The right to compensation for the damage caused by the secrecy order and/or use may also be the basis for suit against the United States in the United States Court of Federal Claims.