A secrecy order is an official instruction from the Commissioner of the United States Trademark and Patent Office (“USPTO”) to prevent the disclosure of sensitive information in a patent application that could threaten national security.

Potential types of inventions that might face secrecy orders include, but are not limited to, inventions with military applications or involving critical technologies like atomic energy, aeronautics, or space technologies, such as satellites, surveillance, sensing and propulsion technologies, or other government work development.

If a secrecy order is applied to an international application filed with the U.S. as the receiving office, the application will not be forwarded to the International Bureau (“IB”). (PCT Article 27(8) and 35 U.S.C. 368). If the secrecy order remains in effect, the international application will be declared withdrawn (abandoned) because the Record Copy of the international application was not received in time by the IB. (37 CFR 5.3(d), PCT Article 12(3), and PCT Rule 22.3). It is, however, possible to prevent abandonment as to the U.S. if it has been designated, by fulfilling the requirements of 35 U.S.C. 371(c) and/or filing a continuation application.

For any invention made in the U.S., an applicant must first file a patent application in the U.S. with the USPTO. The Licensing and Review Branch of the USPTO screens all applications and determines whether there is a potential threat to national security. If no threat is identified, a foreign filing license is granted through the official filing receipt. Applicant can then file abroad, or the PCT application is forwarded to the IB.

If a threat is identified, no foreign filing receipt is granted on the official filing receipt. The Licensing and Review branch then consults with other appropriate agencies, such as the Department of Defense. If no secrecy order has been issued after 6 months from receipt of the official filing receipt, applicant can legally file abroad.

If the agency determines that the invention should be kept Secret, Top Secret, or Confidential, the USPTO Commissioner will issue a Secrecy Order. The secrecy order restricts the applications publication and ability to file in other countries. From here it is a case-by-case basis: sometimes no foreign filing allowed at all, sometimes applicant can petition to file in other countries, or petition to rescind the secrecy order.

An application under a secrecy order will still be examined at the USPTO. The Secrecy Order must be lifted before an application will publish or before a hearing for an appeal from a final rejection can occur. The Secrecy Order is lifted once the agency determines it is no longer a national security threat or if the agency does not renew the order after one year.

Questions related to secrecy orders sometimes come up with clients that are dealing with inventions developed under government funding (including department of defense) or whose primary customer is or could be the government. We, at Peacock Law, can help you navigate these issues. This issue should not be (and rarely is) an impediment to your commercialization.