AFTER years of hard work, you have finally perfected your greatest invention. You file for a patent, and then sit back to wait for the money to roll in.
Except that it doesn鈥檛. Instead, you get a curt letter from a security official at the patent office, informing you that your patent will not see the light of day any time soon. The technology you have designed is a threat to national security and has been designated a state secret. Tell anyone, or try to patent the idea in another country, and you face two years in jail. Welcome to the murky world of black patents.
Secrecy orders can be slapped on private inventions in 13 of the 26 member countries of NATO, as well as in Australia and New Zealand. And the trend, from US figures at least, appears to be upwards: while 18 private American citizens had their inventions gagged in 1999, by last year the figure had risen to 61 (see Chart). Including patents filed by companies such as defence contractors, 4885 secrecy orders are now in place in the US compared with 4741 in 2001.
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The terror attacks on the World Trade Center and the Pentagon have helped to fuel patent prohibitions in the US, says Don Hajec, a director at the US Patent and Trademark Office in Alexandria, Virginia, who is responsible for handling so called 鈥渟ecure patent applications鈥�. 鈥�9/11 generated ideas on the anti-terror front as inventors do tend to react to events,鈥� he says. 鈥淏ut it also raised the level of awareness and concern about invention secrecy.鈥�
In the UK, figures are vague: of the 30,000 patent applications sent to the UK Patent Office in Cardiff every year, 600 to 1500 are pulled aside for closer scrutiny by military experts. 鈥淲e don鈥檛 reveal how many of those we prohibit from dissemination,鈥� says Patent Office information officer Jeremy Philpott. However, on the orders of the Ministry of Defence, the UKPO declassifies about 100 patents each year 鈥� typically a decade or two after they were filed.
Just what does patent-gagging legislation cover? The US Invention Secrecy Act of 1951 says that whenever the 鈥減ublication or disclosure of the invention by the granting of a patent would be detrimental to the national security, the Commissioner of Patents shall order that the invention be kept secret鈥�. The UK Patents Act of 2004 runs along similar lines. In both cases, penalties for infringement include two years鈥� imprisonment and/or heavy fines.
In the UK, patent officers identify potential black patents by checking every filing for innovations the military would want to keep under wraps. 鈥淎 small examining team of Patent Office staff handles all the secure applications and they work in a secure section,鈥� says Philpott. They are not, he stresses, employees of the government security services.
Philpott says that of all the applications coming their way, there will be a small number that stand out in the early stages as having a potential impact on national security. 鈥淐ertain technologies like camouflage and radar reflectors, perhaps useful in stealth technology, might pique our interest,鈥� he explains. 鈥淏ut that doesn鈥檛 mean that every application that ever relates to those things will be pulled.鈥�
In the US, most applications that go for secrecy checks are filed by government defence agencies and contractors. 鈥淭hey hit our door marked as being under secrecy orders and go straight to private review,鈥� says Hajec.
But for the rest, including those filed by private inventors, the USPTO uses software to initially sift electronic scans of paper patent filings. The software compares the text with a list of military-critical hit terms, and any documents it identifies are sent to a team of expert human screeners. 鈥淭he hit list includes terms that should pick out bioweapons or nuclear technologies, for instance,鈥� says Hajec.
The screeners, patent examiners with military knowledge, then decide whether the filing should be sent to the Pentagon鈥檚 Defense Technology Security Administration in Washington DC, where army, navy and air force specialists make the final decision on whether a secrecy order should be placed on the invention.
As an example, Hajec highlights a recent case where a private inventor narrowly escaped a secrecy order. The inventor had designed a device that electronically raised pivotable spikes buried in a road to burst vehicle tyres. 鈥淲hile it was invented to stop people leaving a parking lot without paying, it would also be useful in stopping a car bomber approaching an embassy,鈥� says Hajec. 鈥淚t was decided not to impose an order because it had wider applications than anti-terror ones. We don鈥檛 want to stifle innovation.鈥�
But what if somebody designed a new way to disperse pesticide from a crop-spraying plane? Would its potential to spread a bioweapon such as anthrax attract a secrecy order? Philpott won鈥檛 say. 鈥淗ow that judgement is exercised isn鈥檛 really a suitable topic of conversation. The point is we have guidance and we apply it accordingly.鈥�
Classified patents go through a very similar process to ordinary patents. Patent examiners still search all previous patents looking for prior art to determine whether a patent is indeed novel. The difference is that an official patent is not granted on sensitive inventions until the secrecy order has been lifted, which could be many years later. By then, technological innovation may have advanced so far that the patent is worthless financially. 鈥淚 know this has happened to some inventors,鈥� says David Wardell, chairman of the UK Institute of Patentees and Inventors, based in Kingston upon Thames, Surrey. 鈥淯nfortunately most of the stories are probably apocryphal because it becomes an official secret once the order is imposed and they cannot then talk about it to anyone.鈥�
And when such a patent is declassified, it is done quietly. The patent is published as normal, the only clue being a large discrepancy, usually of some decades, between the filing date and the publication date. On ordinary patents, the two dates are usually less than two years apart.
鈥淭he defence ministry didn鈥檛 take Frank Whittle鈥檚 jet engine idea seriously. The patents were published and the Nazis got hold of them鈥�
While secrecy orders in the US are not supposed to be permanent, in practice they often are. 鈥淲hen the US is not in a state of war, the secrecy order is imposed for one year. But we almost always renew those every year. In a state of war, the order is permanent,鈥� says Hajec, although that does not apply today, despite the conflicts in Iraq and Afghanistan. 鈥淐ongress advises us when we are at war. We are not at war.鈥�
Wardell understands why the military imposes its secrecy rules. 鈥淏efore the second world war, the defence ministry didn鈥檛 take Frank Whittle鈥檚 jet engine idea seriously, so his patents were published. It meant the Nazis got hold of it and developed a jet engine before they otherwise would have.鈥�
Steven Aftergood is editor of Secrecy News, a newsletter that challenges government secrecy and is published by the Federation of American 杏吧原创s. He recognises the need for a patent secrecy option but is sceptical about the scope and application of the current system. 鈥淭he truth is, I don鈥檛 know if the system is being wisely and prudently employed. I don鈥檛 know if secret inventions are being disclosed as soon as their sensitivity lapses. And I don鈥檛 know if the scope of what is withheld has broadened significantly or at all since 9/11. I would like to know.鈥�
Yet another mystery is compensation. Both the UK and US patent secrecy legislation says inventors should be compensated if they can prove their idea would have made money had it not been kept secret. But it is unclear how they prove this when they cannot disclose information about the invention. 鈥淚t is the applicant鈥檚 responsibility to prove financial harm and my understanding is that it is very difficult to prove,鈥� says Hajec.
In the UK, the Ministry of Defence says decisions on compensation are assessed by its in-house patent attorneys and economic forecasters, probably in tandem with the Patent Office鈥檚 view on the novelty and inventiveness involved. Independent auditing is not ruled out when disputes crop up as long as it has security clearance.
But assessing the commercial worth of a gagged patent is not really possible because the restrictions are open-ended. If you knew your patent would be declassified in 10 years, you might be able to calculate your lost sales. 鈥淭here are currently 4800 secrecy orders in force in the US,鈥� says Hajec. 鈥淎nd some of them have been in force since the 1930s.鈥� That鈥檚 an awful lot of sales years to have missed out on.
