PTO’s Notice of Request for Comments on Secrecy—Patents and “Economic Security”

The PTO Secrecy Notice and Request for Comments has been issued. It asks whether and how to identify and suppress publication of patent applications that are deemed detrimental to the nation’s economic security.

Recently, Congress has asked whether the currently performed screening of patent applications for national security concerns should be extended to protect economically significant patents from discovery by foreign entities. The Commerce, Justice, Science, and Related Agencies Subcommittee’s report on the 2012 Appropriations Bill stated:

“By statute, patent applications are published no earlier than 18 months after the filing date, but it takes an average of about three years for a patent application to be processed. This period of time between publication and patent award provides worldwide access to the information included in those applications. In some circumstances, this information allows competitors to design around U.S. technologies and seize markets before the U.S. inventor is able to raise financing and secure a market.” H.R. Rpt. 112-169, at page 18 (July 20, 2011)

The Subcommittee instructed the USPTO to proceed to study these issues, stating that the “PTO, in consultation with appropriate agencies, shall develop updated criteria to evaluate the national security applications of patentable technologies [and] to evaluate and update its procedures with respect to its review of applications for foreign filing licenses that could potentially impact economic security.” H.R. Rpt. 112-169, at page 19 (July 20, 2011) In this context, the Subcommittee describes “economic security” as ensuring that the United States receives the first benefits of innovations conceived within this country, so as to promote domestic development, future innovation and continued economic expansion.

There are several interesting aspects to this Notice. First, “economic security” is described in terms of a race: economic security means that the U.S. is the first to receive a benefit from innovation. The idea that economic security means first-to-benefit is plausible, but it is not necessarily the only (or best) concept of economic security. A competing notion of economic security would focus not on whether the U.S. would receive the first benefit, but instead focus on ensuring that the U.S. receives the maximum benefit from patented innovations. This maximum could be an absolute or relative one, depending on whether our notion of economic security is measured against some baseline or against other countries’ economies.

Perhaps, though, in the context of secreting patent applications the Subcommittee’s definition is more useful: we care more about first benefits than about net benefits when examining the initial few years after a patent application is filed (because by definition, those years would be the earliest years). What are the implications of this definition when it’s used to think about proposed economic-security secrecy orders? The PTO’s notice suggests a few:

  • First, should an economic-security based secrecy screening be modeled after the national-security based screening procedure that’s already in place under 35 U.S.C. § 181?
  • Second, do economic-security concerns warrant some form of export-control regulation over the applicant’s products “covered by” the patent application?
  • Third, for applications that implicate economic-security concerns but not national-security concerns, what agency or bodies should make determinations as to an application’s economic-security qualifications, scope, or export-issues?
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Posted on May 8, 2012, in International, Legislation, Patent, Regulations and tagged . Bookmark the permalink. Comments Off on PTO’s Notice of Request for Comments on Secrecy—Patents and “Economic Security”.

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