[联邦登记册77，数字77（星期五，2012年4月20日）] [注意事项] [第23662-23665页] ------------------------- - - - - - - - - - - - - - - - - - - - - - - - 商务部美国专利和商标局[Docket No. PTO-P-2012-0012]关于在保密秩序下放置经济上有重要专利的可行性的请求通知，并且需要审查确定与国家安全相关的保密订单的标准代理：美国专利商标局，商业部。行动：提出意见的请求通知。--------------------------------------------------------------------------------------摘要：根据国会的要求，美国专利和商标局（USPTO）正在寻求评论美国是否应该识别和栏从[[第23663页]]出版并发布某些专利申请对国家的经济安全。USPTO还在寻求评论关于审查可能对国家安全可能不利的申请的现有程序变更的可取性。日期：希望提交书面评论的人应当在2012年6月19日之前提交这些评论。地址：书面评论应通过互联网发送电子邮件发送给[电子邮件受保护]评论也可以通过邮件提交给：邮件停止国会关系，注意：Jim Moore，P.O.Box 1450，Alexandra，VA 22313-1450.虽然评论可能会通过邮件提交，但USPTO更喜欢通过互联网接收评论。在评论期后，书面评论将在执行图书馆，位于麦迪逊街，亚历山大，弗吉尼亚州亚历山大，弗吉尼亚州弗吉尼亚州的麦迪逊西部大厦的行政图书馆，22314。联系人：Mona Scott在[电子邮件受保护]或（571）272-5777。此外，公众的评论也将通过USPTO Internet网站（地址：http：//www.uspto.gov）提供。由于评论将提供公开检查，因此不希望公开的信息，例如地址或电话号码不应包含在评论中。有关详细信息，请联系：吉姆摩尔，政策和外事办公室，通过电话（571）272-7300;通过电子邮件[电子邮件受保护];或通过邮寄方式：邮件停止Opea，美国专利和商标局，P.O.Box 1450，亚历山大，弗吉尼亚州22313-1450，Attn：詹姆斯摩尔。补充资料：最近，国会询问目前表演筛查了国家安全问题的专利申请是否应扩大，以保护外国实体发现的经济上有关专利。商业，司法，科学和相关机构小组委员会关于2012年拨款法案的报告规定：“按法规，专利申请在申请日期之后发表于18个月”，但专利需要约三年待处理的应用程序。出版物和专利奖之间的这段时间提供了全球对这些申请中包含的信息的访问。在某些情况下，这些信息允许竞争对手在美国技术围绕美国技术设计并抓住市场。在美国发明者能够提高融资和保护市场。''H.R. RPT。112-169，Page 18（2011年7月20日）小组委员会指示USPTO继续研究这些问题，指出“与适当机构协商”的“PTO”，应制定更新的标准，以评估可专利的国家安全申请金博宝正规网址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. To carry out this study, the USPTO is seeking comments from the innovation community on the question of whether an economic security screening procedure, which borrows from the current national security screening procedure, should be considered. The USPTO is also seeking comments on whether the criteria used in the national security screening procedure adequately perform the desired function. 1. Background A. Secrecy Orders Currently, all patent applications are screened, pursuant to 35 U.S.C. 181, to determine whether the publication or disclosure of the application might be detrimental to national security. Such applications are routed to the Department of Defense and other agencies designated by the President as a ``defense agency of the United States'' for review prior to publication. The defense agency then makes a substantive determination as to whether the application in question should be placed under a secrecy order for such period as the national interest requires. These agencies also provide the USPTO with criteria used to determine what applications should be screened as well. The owner of an application which has been placed under a secrecy order has a statutory right to appeal from the order to the Secretary of Commerce. The criteria used to determine whether an application should be placed under a secrecy order for national security reasons have been set by numerous statutes, each controlling the disclosure of a certain type of subject matter. For example, all atomic energy information is classified pursuant to the Atomic Energy Act of 1954 unless a positive action is taken to declassify it. The regulations implementing the Atomic Energy Act are promulgated by the Department of Energy, and are set forth at 10 CFR Part 810. Other applicable statutes governing the movement of material or information to a destination outside the legal jurisdiction of the United States include the Arms Export Control Act of 1968 (22 U.S.C. 2751 et seq.), the Export Administration Act of 1979 (50 U.S.C. App. 2401-2420) (in force pursuant to the Presidential Notice of August 12, 2011, titled ``Continuation of Emergency Regarding Export Control Regulations,'' 76 Fed. Reg. 50661), and the Defense Authorization Act of 1984 (10 U.S.C. 130). B. Effects of Secrecy Orders on Foreign Patent Protection and Exports A secrecy order severely restricts the applicant's ability to obtain patent coverage outside of the United States. A secrecy order prevents U.S. publication and patent issuance, pursuant to 35 U.S.C. 181 and 35 U.S.C. 122(b)(2)(A)(ii). A secrecy order also prevents any foreign or international filing of the application, with very limited exceptions as set forth in 37 CFR 5.5. An applicant having a patent application under a secrecy order in the United States who violates that order through publication, disclosure, or filing of a foreign patent application shall be subject to abandonment of the United States patent application, pursuant to 35 U.S.C. 182. Under 35 U.S.C. 184, foreign filings are prohibited for applications under secrecy orders without the concurrence of the reviewing agency that requested the secrecy order. For United States applicants desiring to file a patent application in a foreign country and maintain priority of invention back to the United States filing date, a foreign application for patent must be filed within one year of the United States filing date, in accordance with Article 4 of the Paris Convention. If the secrecy order is lifted after that one-year period, the United States applicant may file a patent application in a foreign country; however, applicant will not be accorded the priority of the United States filing date. Where a secrecy order is applied to an international application, the application will not be forwarded to the International Bureau as long as the secrecy order remains in effect (PCT Article 27(8) and 35 U.S.C. 368). If the [[Page 23664]] secrecy order remains in effect, the international application will be declared withdrawn (abandoned) because the Record Copy of the international application was not received in time by the International Bureau (37 CFR 5.3(d), PCT Article 12(3), and PCT Rule 22.3). It is, however, possible to prevent abandonment within the United States if the international application designates the United States under the requirements of 35 U.S.C. 371(c); see MPEP 1832. Additionally, a secrecy order based upon national security operates in tandem with United States export control as set forth by statute in the Export Administration Regulations, 15 U.S.C. 734.3(b)(1). The export of a product covered by one of the categories for which a patent application would be placed under a secrecy order is subject to control by the defense agency that regulates such subject matter. If a new category of secrecy order subject matter is to be created (economic security) the question of whether export of that subject matter would be regulated by a United States agency would need to be addressed. In such a case, a domestic entity having a patent application placed under an economic secrecy order could be restricted from exporting any product covered by that application until the secrecy order is lifted by the USPTO operating in concert with the relevant United States agency. C. Currently Available Procedures to Assist Maintaining Secrecy Until Patent Issuance Many foreign jurisdictions publish full applications at eighteen months. Recent proposed legislation would instruct the United States Patent and Trademark Office to publish only an abstract of the application or otherwise amend 35 U.S.C. 122(b)(2)(B)(i). In the United States two procedures are available to prevent a patent application from publication. First, an applicant may request nonpublication of the application until such time as the application issues as a patent. Under 35 U.S.C. 122(b)(2)(B)(i), an applicant may request nonpublication upon filing of the patent application. An applicant making such a request must certify that the invention disclosed in the application has not and will not be the subject of an application filed in another country, or filed under a multilateral international agreement that requires publication of applications 18 months after filing. The second procedure that can prevent a patent application from publication is a secrecy order under 35 U.S.C. 181 and 35 U.S.C. 122(b)(2)(A)(ii). A secrecy order is a Governmental directive, rather than a private elective, which prevents an applicant from obtaining patent protection and makes the application secret until the Government deems it advisable to the application to proceed to issuance. A secrecy order is effective to restrict publication, disclosure, or filing of a foreign patent application, for such period as the national interest requires. In contrast, a nonpublication request restricts publication of the patent application only up to the date of the issuance of a patent, and may be rescinded by the applicant at an earlier date. An alternative to preventing publication of a patent application is to expedite its prosecution, which reduces the time between disclosure and patent issuance. Prioritized examination, as authorized by Section 11(h) of the Leahy-Smith America Invents Act, sets an aggregate time goal of 12 months for an application to reach final disposition, which may be a final rejection or an allowance of the claims. By submitting a request upon filing the patent application, accompanied by the proper fees, a patent applicant may potentially receive an issued patent prior to the 18-month publication date. 2. Scope of Requested Comments The Subcommittee has raised the concern of a potential risk of loss of competitive advantage during the period of time between publication and patent grant. Taking into account the current procedures through which an applicant may elect to defer publication of a patent application until patent issuance or expedite its prosecution, this Notice seeks to obtain feedback on whether the United States Government should institute a new regulatory scheme, modeled from that applied to national security concerns. This new procedure would institute a secrecy order that forbids applicants from disclosing subject matter deemed to be detrimental to national economic security for such period as the national interest requires. Interested members of the public are invited to submit written comments on issues that they believe relevant to whether, and under what circumstances, the United States should extend the current framework for placing patent applications under an order of secrecy to establish an additional screening program based on economic factors. The USPTO has not taken a position, nor is it predisposed to any particular views, on the following questions. Comments on one or more of the following would be helpful: Questions on Economic Security-Based Secrecy Orders 1. Should the USPTO institute a plan to identify patent applications relating to critical technologies or technologies important to the United States economy to be placed under secrecy orders? 2. Which governmental body should be designated by the President to provide the USPTO with the final determination as to which applications should receive this treatment? 3. Which mechanisms should a governmental body use, at the time a patent application is filed, to determine that publication at 18-months of that particular application would be detrimental to national economic security? 4. What criteria should be used in determining that dissemination of a patent application would be detrimental to national economic security such that an application should be placed under a secrecy order? 5. Would regulations authorizing economic secrecy orders be covered by the current statutory authority provided to the USPTO, or would such orders require a new statutory framework? 6. What would be the effect of establishing a new regulatory scheme based on economic security on businesses, industries, and the economy? 7. How could Government agencies best perform such a determination while remaining in compliance with applicable laws and treaty obligations? 8. How would such a policy affect the public notice function that underlies the policy of publication, including the ability of United States inventors and innovators to timely access the newest technical information upon which to build and stay ahead? 9. What would be the impact on United States innovators, companies, and employers? How would such a secrecy order affect United States businesses that currently have substantial business operations or sales in foreign countries? 10. Are the procedures currently available before the USPTO, such as nonpublication requests and prioritized examination, sufficient to minimize risks to applicants and allay concerns with 18-month publication of their invention? If not, why? 11. What are the risks that an economic secrecy order regime would influence other nations to implement similar laws? Would the global implementation of an economic secrecy order regime benefit or hinder the [[Page 23665]] progress of innovation in the United States? 12. How would such a secrecy order regime affect international efforts toward a more harmonized patent system? 13. Should the USPTO consider limiting what is published at 18 months? This Notice also poses the following questions to determine the adequacy of the criteria used to place various technologies under secrecy orders for national security reasons. Questions on National Security-Based Secrecy Orders 14. How should criteria currently used by United States defense agencies to screen patent applications for potential national security- based secrecy orders pursuant to 35 U.S.C. 181 properly encompass the scope of invention, which may have a bearing on ensuring the United States maintains its technical advantages in defense-related fields? 15. Are there examples where technologies that could relate to United States defense capabilities that were excluded from consideration for a secrecy order? 16. What is the competitive cost to expanding the scope of the criteria used to screen applications for security order consideration? 17. Among patent practitioners, is there a common practice of attempting to avoid consideration for a secrecy order by drafting the patent disclosure in such a way as to not raise national security implications of an invention? Dated: April 16, 2012. David J. Kappos, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office. [FR Doc. 2012-9503 Filed 4-19-12; 8:45 am] BILLING CODE 3510-16-P