In the United States, patents and national security interests sometimes intersect in ways that can affect an inventor’s rights. The U.S. government has the authority to impose “secrecy orders” on patent applications that it deems sensitive to national security. This post provides a comprehensive overview of how and why patent applications may be sealed for security reasons, the legal framework behind this process, the inventor’s obligations and constraints, and the mechanisms by which an inventor can seek compensation.
I’ve filed literally hundreds of patent applications for my inventions, and I’ve only run into this issue once. For a short period of time, an application of mine was paused by a secrecy order that was soon lifted. At the same time, I’ve talked with inventors who have had many applications subjected to a secrecy order. It happens.
1. Legal Foundations of Secrecy Orders
1.1 Statutory Basis
- 35 U.S.C. §§ 181–188: These sections of the United States Code empower the U.S. Patent and Trademark Office (USPTO), in collaboration with defense agencies, to withhold the publication of patent applications that might threaten national security.
- 37 C.F.R. Part 5: Implements the statutory provisions and provides administrative details, including procedures and requirements for patent applicants and the USPTO.
1.2 Role of Government Agencies
- Patent and Trademark Office (USPTO): Receives and processes patent applications. If it identifies or is notified that an application contains subject matter with national security implications, it flags the application for possible secrecy review.
- Defense Agencies: The Department of Defense (DoD), Department of Energy (for nuclear technology), or other federal agencies may review the patent application. These agencies can recommend imposition of a secrecy order.
- Trump/DOGE Personnel Cuts: Reviewing the well over one million patent applications filed annually has to be time consuming — and since patents published 18 months after the first filing (usually), staffing shortfalls that slow things down will start to run into deadlines. If cuts are made to the personnel tasked with reviewing patent applications for national security issues, there may be a real world change — but predicting that change is hard to do. You can see from the following section that the real risk of a change to screening for national security issues comes from cuts to USPTO staffing.
2. The Process of Imposing a Secrecy Order
2.1 Initial Review
When a patent application is filed, it is screened internally at the USPTO. Certain keywords, classifications, and subject areas (e.g., advanced weaponry, encryption technology, nuclear power) may trigger extra scrutiny. The USPTO may then share the application (in confidence) with the relevant defense or security agencies for review.
2.2 Decision and Notification
If the reviewing agency concludes that publication or disclosure of the invention would be “detrimental to national security,” it can request that the Director of the USPTO issue a secrecy order under 35 U.S.C. § 181.
- Secrecy Order: This forbids the inventor and any co-applicants (or assignees) from disclosing the invention publicly.
- Notification to Inventor: The inventor (or the prosecuting attorney/agent) receives an official notice that the patent application is now subject to a secrecy order. The notice details the restrictions and penalties for noncompliance.
2.3 Types of Secrecy Orders
- “Secrecy Order” (SO): Most common, generally restricting all disclosure.
- “Secrecy Order with Permit”: In rare instances, limited disclosure may be allowed to certain authorized parties (e.g., specific government contractors) under strict terms.
- “Modification” or “Renewal”: Secrecy orders must be renewed every year. If circumstances change, the order can be modified or lifted.
3. Obligations and Restrictions Imposed on the Inventor
3.1 Non-Disclosure Requirements
Under a secrecy order, the inventor cannot:
- Publish or publicly disclose any details of the invention.
- File corresponding patent applications outside the U.S. (foreign filing) without special permission from the USPTO.
- License or sell the invention for broad commercial purposes without government approval.
3.2 Compliance and Penalties
- Criminal Penalties: Violating a secrecy order can lead to fines or imprisonment under U.S. law.
- Disqualification of Patent Rights: If an inventor discloses the invention against the secrecy order, it could jeopardize the ability to secure valid patent protection later (even after the order is lifted).
Because the stakes are high, maintaining strict confidentiality is critical for the inventor as well as any legal counsel or business partners in the know.
4. Compensation for Inventors Under a Secrecy Order
4.1 Legal Basis for Compensation
- 35 U.S.C. § 183: Provides that inventors may seek compensation from the U.S. government if the secrecy order causes them to suffer a “damage” (e.g., loss of the opportunity to commercialize or license the technology).
4.2 Conditions for Compensation
- Government Use: If the government itself uses or authorizes the use of the patented invention (or application subject matter) during the secrecy period, the inventor may be entitled to “reasonable and entire compensation.”
- Loss of Commercial Opportunity: The inventor might also claim damages for being prevented from exploiting the invention in the marketplace or from licensing it to third parties.
4.3 Process for Filing a Claim
- Filing a Lawsuit: Inventors typically pursue claims in the U.S. Court of Federal Claims (the same court that hears patent infringement actions against the U.S. government).
- Establishing Damages: The inventor must show a direct link between the secrecy order and the financial harm suffered (for example, lost licensing revenue or lost time in a competitive market).
- Negotiation and Settlement: Many cases are settled out of court; the government may negotiate a lump-sum payment or a royalty arrangement.
4.4 Timing of Compensation
- During the Secrecy Order: It can be difficult to prove the full extent of damages until the order is lifted and the market potential can be properly assessed.
- After Lifting the Order: If the secrecy order has expired, an inventor can more concretely calculate the financial losses incurred during the sealed period.
5. Impact on Patent Term and Enforcement
5.1 Length of Secrecy
Secrecy orders are reviewed annually. Some remain in place for multiple years—occasionally lasting a decade or more. During this period, the USPTO will not issue the patent (nor publish the application) in the usual manner.
5.2 Potential Term Adjustment
Unlike certain patent office delays that can lead to a Patent Term Adjustment (PTA) under 35 U.S.C. § 154(b), secrecy orders do not automatically guarantee an extended patent term. The inventor’s term is counted from the usual statutory date (20 years from the earliest effective filing date). However, under 35 U.S.C. § 181, once the order is lifted, the inventor has a window (6 months) to request that the USPTO proceed with normal prosecution and issuance.
Some inventors attempt to maintain the potential for full term protection by periodically filing continuing applications or employing other strategic approaches, but secrecy order procedures do not inherently pause the statutory clock.
5.3 Enforcing Rights During Secrecy
No patent issues while the secrecy order remains active; hence, the inventor cannot enforce the invention against private infringers in typical patent infringement actions. If the government is using the invention or has authorized a third party to use it, any dispute goes through a specialized process for seeking compensation—again, typically under 28 U.S.C. § 1498 or related statutes, rather than via conventional patent infringement suits in district court.
6. Lifting the Secrecy Order
6.1 Annual Review
By law, each secrecy order must be re-examined by the relevant agency every year to determine if continuing secrecy is warranted. If the agency concludes that the rationale for secrecy no longer applies, it will recommend lifting the order.
6.2 Post-Secrecy Patent Prosecution
After the order is lifted:
- Resumption of Prosecution: The application can proceed through normal USPTO examination (if not already examined in secret).
- Patent Issuance: If allowable claims exist, the patent can issue in due course.
- Publication: The USPTO may then publish the application (or the issued patent). Any prior confidentiality obligations cease, though certain details might remain partially redacted if the government deems it necessary.
6.3 Potential Legal Remedies
Once the secrecy order is lifted, if the government or its contractors used the invention during the secrecy period, the inventor can formalize claims for compensation for that period. The inventor also gains the full right to enforce the patent against private parties for infringement occurring after the patent issues (and sometimes for activities pre-issuance if they continued post-issuance, depending on legal nuances).
7. Appeals and Challenges
7.1 Administrative Appeals
If you believe a secrecy order was imposed in error or continues unnecessarily, you can request reconsideration by the relevant agency and the USPTO. Detailed argumentation, along with technical and legal justifications, is typically required.
7.2 Judicial Review
In limited cases, if administrative channels fail, inventors may seek judicial review. Courts, however, tend to defer heavily to national security determinations by executive agencies. As a result, overturning a secrecy order can be challenging unless clear procedural violations or abuses of discretion are demonstrated.
8. Key Takeaways for Inventors
- Stay Compliant: If you receive a secrecy order, treat it with utmost seriousness. The potential penalties for unauthorized disclosure are severe.
- Document Losses: Keep clear records of opportunities foregone, potential licenses, or business ventures curtailed due to the secrecy order—these records can be critical if you later seek compensation.
- Consult Experienced Counsel: Navigating secrecy orders often requires specialized patent attorneys or counsel with security clearance. They can help you respond to government inquiries and preserve your rights.
- Check Foreign Filing Requirements: If you need protection abroad, you typically must obtain a foreign filing license from the USPTO. Under a secrecy order, this is even more complex—and often denied without an explicit permit.
- Expect Extended Timelines: Secrecy orders can persist for years, during which no patent issues and no normal enforcement is possible. Understanding that your timeline for commercializing or protecting your invention will be disrupted is crucial.
9. Conclusion
Secrecy orders represent an unusual but significant intersection of intellectual property rights and national security. Although relatively few patent applications are subject to such orders, the implications for inventors can be profound. A sealed patent application can mean indefinite delays, suppressed commercial opportunities, and complex confidentiality obligations. At the same time, U.S. law provides mechanisms for compensation and eventual patent issuance once the secrecy order is lifted.
If you find yourself subject to a secrecy order, navigating these legal and administrative pathways can be intricate, requiring careful documentation, sustained communication with government agencies, and often seasoned legal advice. While secrecy orders serve the national interest by keeping potentially sensitive technologies out of the public domain, the law does strive to ensure that inventors have avenues to protect their rights and to seek fair remuneration for government-imposed restrictions.
Disclaimer: This blog post is provided for informational purposes only and does not constitute legal advice. If you have specific questions about secrecy orders or patent law in general, consult a qualified attorney with experience in national security-related intellectual property matters.