CONSTANT v. ADVANCED MICRO-DEVICES, Department of Homeland Security, Department of Justice, Federation of American Scientists, Freedom of Information Act, National Security Agency, Pentagon, The Invention Secrecy Act of 1951, U.S. Patent and Trademark Office
It’s a common refrain in the stump speeches of politicians that America is a nation of ideas, but Congress decided in 1951 that some of those ideas must nonetheless be kept hidden. Today, as Silicon Valley and other innovation centers churn out thousands of patents a year, some lawmakers wonder whether the government should have broader powers.
What is known about secrecy orders is largely the result of Freedom of Information Act requests filed by groups like the Federation Of American Scientists, an independent, nonpartisan think tank. Those documents show that the overall number of secrecy orders has steadily increased in recent years, totaling more than 5,400 by 2013, with some of them in effect for decades.
Tens of thousands of patent applications are manually examined each year under the Invention Secrecy Act and referred for a final decision to the Pentagon, National Security Agency, Department of Justice and, more recently, Department of Homeland Security.
“From the patent owner’s perspective, you’re stuck in this legal limbo where the government says you’ve got this valid invention, but there’s nothing you can do with it until maybe decades later,” said Mark A. Lemley, a technology law professor at Stanford University
Secrecy orders are rare, but violating one can result in prison time.
A California man named James Constant filed his patent application in 1969 for radar technology that could track shipping containers, packages or components traveling along an assembly line. After his secrecy order was eventually lifted in 1971, Constant sought damages from the government, arguing that he couldn’t capitalize on the idea. When it finally reached trial years later in 1982, the court ruled against him, concluding that a “lack of business experience” impeded his chance of success.
Constant said from his home in Claremont that the secrecy order caused him to incur “a substantial financial loss” and set him back for years.
“When the secrecy order was put on my patent, I had the only viable technology,” he said.
In each case, the legal headaches occurred only after the inventor had spent no small amount of time and resources developing the idea in the first place.
“We still have a Cold War approach to secrecy orders,” said Pat Choate, an economist and intellectual property expert. “If a secrecy order is imposed, you wind up with the inventor effectively having the technology taken away.”
Lemley and others understand why defense officials might want to shield cryptographic technology that could prevent the government from secretly eavesdropping on the conversations for foreign enemies. But modern encryption can also protect consumers from identity thieves and allow human rights activists living under abusive regimes to communicate more freely.
Troubled by the threat of Economic Espionage from countries like China, lawmakers are asking if some inventions are so essential to the health of the nation’s economy that they, too, should be locked away.
U.S. Rep. Frank Wolf (R-Virginia) directed the Patent and Trademark Office to consider whether secrecy orders should be extended for inventions that are not tied to the nation’s defense but could harm the economy if stolen, counterfeited and sold. Officials responded in April 2012 by asking the public what it thought and got skepticism from intellectual property and secrecy experts.
“Who’s going to make the determination that something is economically viable? It’s usually the market making that determination,” said Robert L. Stoll, who retired as the nation’s patent commissioner in 2011 before joining a private practice.
Stoll said such a move would do its own damage to the economy, and the nation would be better off filing patent applications in foreign countries and taking China or other violators before the World Trade Organization if they fail to honor intellectual property agreements now in place.
Thomas M. Culligan, legislative director for Wolf, countered that achieving recourse from the World Trade Organization can take far too long. The congressman’s goal was, first, to review secrecy orders in general after years of inattention from Congress and, second, to force the federal government to examine how strong present protections are for America’s most important ideas, Culligan said.
“We just wanted to start a conversation. We weren’t necessarily prescribing a solution,” he said.
Under the law, an inventor can seek compensation if defense agencies choose to use the idea or if the applicant can prove damages were suffered by not being permitted to take it to the marketplace. But the process for doing so is arduous, economist Choate said. Among other things, evidence confirming the government simply took an inventor’s idea could itself be considered secret.
Steven M. Hoffberg has handled one secrecy order in his 23 years as an intellectual property attorney. But that order was enough to threaten his client’s idea for a technology that could detect objects, including, potentially, stealth aircraft.
Hoffberg’s client, James Greer of Alabama, lived under a secrecy order for eight years after his application was filed in 2000. During that time, it would have been a challenge to explore whether the idea could be exported to strategic allies of the United States as an anti-stealth technology, let alone identify possibilities outside of the defense community. Those possibilities included object tracking for “smarter” highways of the future and next-generation communications.
Hoffberg argues that it was unjustified for the order to be in place for such a long period of time and that at least by 2004, the application would not have given adversaries a strategic advantage.
“They kept us from fulfilling the purpose of the patent, which was to make an investment to bring a product to market,” Hoffberg said. “If the government wasn’t going to buy the product from us and wasn’t going to let us sell it commercially, we basically had no value.”
Choate and others want the government to stop publishing applications until a formal patent is issued, and if the application is denied, they want it destroyed so the inventor has a chance to try again or guard it as a trade secret and ultimately reap the rewards before it’s stolen.
When it comes to secrecy orders, many of the technologies were backed by defense agencies to begin with. So it’s less of a surprise if such an order exists for the technical components of a nuclear weapons system, for example.
But dozens of so-called “John Doe” secrecy orders are issued each year, affecting private individuals and businesses that might never enjoy a payoff from their invention, even though the government has no explicit interest in the technology.
So is the next Google hiding behind a secrecy order? It seems highly unlikely, but because of the shroud of secrecy, no one can know for sure, said science historian Alex Wellerstein.
He said even one hidden technology carrying possible benefits for society that are not defense-related is enough to undermine the purpose of patents — encouraging invention. He and other experts want at least the criteria used for issuing secrecy orders made public.
“The law says it just has to be detrimental to national security, which is vague,” Wellerstein said. “That doesn’t mean anything. It’d be nice if you had to actually pass (the patent application) to people who have business experience, not just people who make weapons and have a tendency of seeing lots of things as dangerous.”