Whilst a secret invention may appear to be the antithesis of the intended function of our patent system, there are some instances where the publication of a patent application is prohibited by necessity.

In the 17th century “letters patent” were developed as a trade-off between inventors and the British monarchy whereby the Crown would grant a monopoly over the invention, while the details of the invention had to be fully disclosed for the benefit of society 1. In fact, the word “patent” originated from the Latin verb “patere” meaning “lying open”.

In modern times, patent applications are generally published 18 months after the earliest priority date of the application. Prior to that publication the application is confidential to the patent office in which it was filed. However, there are a number of notable exceptions.

For example, under Section 173(1) of the Patents Act (1990) the Australian Commissioner of Patents can prohibit the publication of the patent application “in the interests of the defence of the Commonwealth”. These patent applications may relate to weaponry, explosives or “associated technology”, which includes photographs, models or any information relating to the enrichment, reprocessing and production of nuclear-type material.

These patent applications may also relate to ‘dual-use’ technologies, i.e. technologies with current or potential military and civilian applications. Ammonium nitrate is an example of one such ‘dual-use’ technology. It is primarily used to manufacture fertilisers, but is also mixed with fuel oil to form a powerful explosive, and has the potential to be used as a propellant for ballistic missiles. The Australian Defence and Strategic Goods List (DSGL) provides an extensive list of subject matter that the Government may desire to keep from falling into the ‘wrong hands’.

What happens when a patent is prohibited from publication in Australia?

All patent applications are reviewed for a possible disclosure of information that would give rise to a prohibition order. In cases that are flagged by an Examiner, the Commissioner of Patents seeks advice from the relevant Government Agency that regulates the technology in question (e.g. Department of Defence). At this point, a prohibition order is put on the application pending receipt of advice.

When a request for examination is filed in respect of a patent application upon which there is a publication prohibition order, the Prohibited Case Manager will inform the supervising examiner of the relevant examination section. All applications are then handled as if the files were classified as Secret, requiring personal hand delivery and examination by an examiner holding a current security clearance to Secret.

It is to be noted that an objection of lack of novelty or inventive step cannot be based on a prohibited case (such cases being unpublished). Hence, examiners do not perform a search of currently prohibited cases, not even for a possible ‘whole of contents’ novelty citation 2. In rare cases when an examiner believes a search of prohibited applications is required, it must be established that there is a sufficient ‘need to know’ before the examiner is granted access to those applications.

Once a prohibited application is deemed to be in order for allowance, the application is suspended in the application phase and publication or communication of any of the subject matter of the patent application is prohibited or restricted, thereby effectively preventing commercialisation of the invention. The penalty for contravening a prohibition order in Australia may include imprisonment for up to 2 years.

The prohibition order may remain in force until the expiration of the patent, in which case the patent will never be publicly available, exploitable or enforceable. Alternatively, the Australian Department of Defence may rescind the classification of the subject matter of the patent application, following which the disclosure is able to be advertised, accepted, and published as per the standard procedure for patent applications in Australia. Subsequently, the inventor may exploit any commercial benefits the previously classified patent holds for the remainder of its patentable life.

Similar prohibited publication laws or secrecy orders exist in a number of international jurisdictions. The TRIPS Agreement legislates “Security Exceptions” in Article 73 whereby a member may suppress a disclosure it considers contrary to its essential security interests. Likewise, the Patent Law Treaty (2000) specifies in Article 4 that “nothing in this Treaty and the Regulations shall limit the freedom of a Contracting Party to take any action it deems necessary for the preservation of essential security interests.”

In the United States of America, the Invention Secrecy Act (1951) grants the American Federal Government the right to issue secrecy orders via the Commissioner of Patents. As of 2017, 5,680 patents were reported by the U.S. Patent and Trademark Office (USPTO) as being restricted under secrecy orders 3. Some date back to the 1920’s. It is noteworthy that 49 of the secrecy orders imposed in 2016 (out of 121) were on private inventors, referred to as “John Doe” Secrecy Orders, as opposed to being inventions sponsored by the Department of Defence. Additionally, in a bid to combat potential economic espionage, the USPTO have considered suppressing publication of inventions that could harm the economy if utilised maliciously. 4

Examples of patents that have recently been released from a secrecy order include a laser-tracking system 5, a warhead-production method 6, an anti–radar-jamming apparatus 7, and a stronger net 8.

Why file a patent if it might be prohibited?

In spite of a seemingly strong disincentive to patent potentially classified inventions, many extremely sensitive technologies have been patented, including top secret cryptographic and nuclear systems. There are a number of reasons for pursuing patent protection for inventions whose publication will likely be prohibited.

  • Prohibited Publication is not guaranteed - While the guidelines in the DSGL appear extensive and tend towards a cautious approach, there is a surprisingly large number of patents with defence applications still being published.

In Australia, less than 10 new prohibition orders are imposed each year on average 9.

Furthermore, even in the US where the actual criteria for a secrecy order are themselves also considered secret as a matter of national security, defence companies are regularly being granted patents. For example, in 2014, the USPTO allowed defence systems integration giant Lockheed Martin to successfully obtain 263 patents including U.S. Patent No. 9146251 titled “System, Method, and Computer Program Product for Indicating Hostile Fire” and U.S. Patent No. 9140784, titled “Ballistic Missile Debris Mitigation”.

  • Patent protection provides commercial security – as opposed to a Trade Secret, a patent grants an inventor the right to prevent others from making, using, or selling the patented invention. A technological breakthrough in a highly competitive area usually warrants patent protection against intellectual property theft and may offer a defence against being sued for infringing a competitor’s patent.

If a patent application becomes prohibited from publication, the applicant can elect to abandon the application without incurring any further costs. Alternatively, the applicant may choose to retain the application and the priority date should the prohibition order be subsequently rescinded.

Whilst there may be some risk when patenting inventions that are in a grey area of the DSGL, if an inventor is concerned a competitor may copy his/her intellectual property, and protection as a Trade Secret is not an option, then the best commercial strategy may be to file a patent and wait to see what the Patent Office says.

  • Government Compensation – It is possible in some instances to receive compensation from the Government (see Patents Act Section 171). In such instances, the Government may acquire the patent or invention that is the subject of the patent application by force. The value of the compensation paid is agreed upon by both parties, or failing agreement, determined by a court.
  • Delayed Publication – As mentioned above, it is possible for the prohibition order to be rescinded at a later date. However, the historical rate of prohibition orders that have been rescinded annually is not encouraging. For example, whilst the US have released into publication more than 1000 patents that were under a secrecy order, from 2013 through 2017 the average was only 25 patents per year. By contrast 117 new secrecy orders were imposed annually. The bottom line is that there is no way to know how long it may take for a prohibition order to be rescinded, and the patent may have already lapsed when it does.

  • Badge of Honour - For a “John Doe” inventor wishing to sell an invention to the military, a patent restrained by a prohibition order can be of value in marketing the invention and securing sales and licensing.

  • Applying for Reconsideration – It is always possible to appeal the decision. For obvious reasons there are no published statistics in this regard, however, there have been a few documented cases in the US courts where inventors have successfully filed a suit against the US Air Force for placing a secrecy order on two of their patent applications 10.

Prohibition orders can appear to be a strong disincentive against filing a patent for potentially useful or even revolutionary technology. However, inventors should be encouraged by the statistics that indicate that a surprisingly large number of patents with defence applications are still being published and granted each year.

The upside of having a patent can be significant. For example, a granted patent may help an inventor protect the intellectual property whilst also enabling the inventor to pursue licensing or other commercial arrangements. As such, if protection as a Trade Secret is not an option, then the best commercial strategy for potentially prohibited technology may be to file a patent and/or design.