An Overview Of Secrecy Provisions Issued By The Patent Office
Introduction
The Patent Act, 1970 allows the public to file for a patent which gives them certain rights over their inventions. A patent, as defined by WIPO, is an exclusive right granted for an invention, which is a product or a process that provides, in general, a new way of doing something, or offers a new technical solution to a problem. These inventions are granted on the basis of their novelty, non-obviousness and utility. But while looking at all these aspects, it is more important to see if these inventions are always brought out commercially in good faith.
Section 35: Secrecy directions relating to inventions relevant for defence purposes
Section 35[1] of the Patent Act, 1970 states the Provisions related to ‘Secrecy of Certain Inventions’.
When a patent application is filed, the Controller publishes it before the Examination for the public to know about the respective application being filed for the grant of patent. But in certain cases, the Controller may put any such application on hold from publication which he / she thinks is of Defence purposes. In such cases, the Controller gives ‘Secrecy Direction’ and shall give notice to the application as well as give directions to the Central Government.
If the Central Government agrees with the opinion of the Controller, the restrictions placed on the patent applicant by the Controller will continue to be in force. If the Central Government is of the opinion that the public disclosure of the content in the patent application will not be prejudicial to the national interests of India, then the Central Government instructs the Controller to lift the restrictions placed on the patent applicant. Further, the Central Government may notify the Controller at any point of time before the grant of a patent that a patent application is relevant for defence purposes and the directions of the Controller, as listed above, will come into force.
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Section 37 (Consequences)
Section 37[2] states that as long as the secrecy directions are in force, the Controller shall not pass an order refusing to grant the patent. The orders passed by the Controller in this regard cannot be appealed against. The application may proceed up to the stage of grant of the patent, but the application and the specification found to be in order for grant of the patent shall not be published, and no patent shall be granted in pursuance of that application.
(1) Where a complete specification for an invention in respect of which directions have been given (Section-35) is found to be in order for grant of the patent during the continuance in force of the directions, then:
a) If during the continuance in force of the directions, any use of the invention is made by or on behalf of, or to the order of the Government, the provisions of sections 100, 101, 103 shall apply in relation to that use as if the patent had been granted for the invention and
b) If it appears to the Central Government that the applicant for the patent has suffered hardship due to secrecy directions, the Central Government may make to him reasonable payment by way of solatium having regard to the novelty and utility of the invention and the purpose for which it is designed, and to any other relevant circumstances.
(2) Where a patent is granted in pursuance of an application in respect of which directions have been given (Section-35), no renewal fee shall be payable in respect of any period during which those directions were in force.
When secrecy direction is imposed and later revoked, the Controller may extend the time within which any step or any act shall take place under section 38[3] [Revocation of secrecy directions and extension of time], the timeline for paying the examination fee is 48 months from date of filing but if the secrecy directions were imposed on the application, the Controller may extend this timeline of 48 months.
It is important, for applicants who are willing to file patent applications outside India, to take a note of Section 39[4], which states that:
Similar Provisions in Foreign States
1.????USA[5]
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Three types of Secrecy Orders, each of a different scope, are issued in the United States of America as follows:
(A) Secrecy Order and Permit for Foreign Filing in Certain Countries (Type I secrecy order)— to be used for those patent applications that disclose critical technology with military or space application in accordance with DoD Directive 5230.25 "Withholding of Unclassified Technical Data from Public Disclosure," based on 10 U.S.C. 130 "Authority to Withhold from Public Disclosure Certain Technical Data."
(B) Secrecy Order and Permit for Disclosing Classified Information (Type II secrecy order)— to be used for those patent applications which contain data that is properly classified or classifiable under a security guideline where the patent application owner has a current DoD Security Agreement, DD Form 441. If the application is classifiable, this secrecy order allows disclosure of the technical information as if it were classified as prescribed in the National Industrial Security Program Operating Manual (NISPOM).
(C) General Secrecy Order (Type III secrecy order)— to be used for those patent applications that contain data deemed detrimental to national security if published or disclosed, including that data properly classifiable under a security guideline where the patent application owner does not have a DoD Security Agreement. The order prevents disclosure of the subject matter to anyone without an express written consent from the Commissioner for Patents. However, quite often this type of secrecy order includes a permit "Permit A" which relaxes the disclosure restrictions as set forth in the permit.
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 utilized maliciously.
2.????Europe[6] –
The EPO has published its decision setting out the reasons for its recent refusal of two European patent applications in which an AI system was designated as the inventor. Filed by an individual in autumn 2018, the applications were refused by the EPO following oral proceedings with the applicant in November 2019, on the grounds that they do not meet the legal requirement of the European Patent Convention (EPC) that an inventor designated in the application has to be a human being, and not a machine.
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Conclusion
The Indian Patent office keeps reviewing the inventions periodically under Section 35 of the Patent Act, 1970. The views of both the Controller and the Central Government are timely informed to the Applicant and the Applicant is given the proper directions as to why the invention has been given Secrecy Directions in good faith. Therefore, it is very important to always keep in mind the grounds or the pointers provided by the Patent Office about having a patentable invention.
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?Written by- Atharva Patwardhan
[1] Section 35, The Patents Act, 1970, available at https://ipindia.gov.in/writereaddata/Portal/IPOAct/1_31_1_patent-act-1970-11march2015.pdf
[2] Section 37, The Patents Act, 1970, available at https://ipindia.gov.in/writereaddata/Portal/IPOAct/1_31_1_patent-act-1970-11march2015.pdf
[3] Section 38, The Patents Act, 1970, available at https://ipindia.gov.in/writereaddata/Portal/IPOAct/1_31_1_patent-act-1970-11march2015.pdf
[4] Section 39, The Patents Act, 1970, available at https://ipindia.gov.in/writereaddata/Portal/IPOAct/1_31_1_patent-act-1970-11march2015.pdf
[5] 120 Secrecy Orders [R-07.2015], available at https://www.uspto.gov/web/offices/pac/mpep/s120.html
[6] EPO publishes grounds for its decision to refuse two patent applications naming a machine as inventor, available at https://www.epo.org/news-events/news/2020/20200128.html