U.S. Patent Will Expire 44 Years After Earliest Effective Filing Date Due to U.S. Army Secrecy Order

By Nelson Monterrosa

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The U.S. Government uses secrecy orders to protect national security by preventing certain patent applications from being published, granted, or otherwise available to the public.  However, at least 21 companies have been sued for alleged infringement of a pre-TRIPs U.S. patent for which grant was delayed by 27 years due to a secrecy order.  In what one hopes is an extraordinarily unusual situation, the patent will expire 44 years after its earliest effective filing date.  Myriad special problems are likely to arise in the course of this litigation campaign, and special equitable defenses may be raised, with uncertain outcomes.

Since 1952, applicants for United States patents have been potentially subject to involuntary delays on patent issuance due to secrecy orders.  According to the Invention Secrecy Act of 1951, any technology that might threaten the national defense and economic stability of the United States may be classified as a defense-related patent.  This classification at least temporarily bars the grant of a patent, requires that the invention be kept secret, restricts the filing of corresponding foreign patent applications, and specifies procedures to prevent disclosure of ideas contained in the application.  Once an application is classified under a secrecy order, it remains pending.  Further, while Patent Office prosecution may continue during pendency of the secrecy order, the patent application may not be allowed to issue as a granted patent until the secrecy order is removed.

What happens to patent applications for which allowance and subsequent grant as patents have been involuntary delayed by secrecy orders, where the delay may be years or even decades?  This question will undoubtedly be addressed by U.S. district courts in Delaware and Texas in a series of patent infringement cases launched by Castlemorton Wireless, LLC, a non-practicing entity (“NPE”).   To date, at least 21 telecommunications and electronics companies have been sued for alleged infringement of U.S. Patent No. 7,835,421 (“the ’421 patent”), which was filed on January 4, 1983 – more than thirty-seven years ago – and was placed under a secrecy order on July 10, 1984.  After this point, while the application remained in prosecution, patent grant and suits for infringement were prohibited.

The secrecy order for the ’421 patent was terminated by the U.S. Army in 2010.  Because the application was filed before June 8, 1995 (i.e., the effective date of the TRIPs Agreement, Article 33, under U.S. law), the term of this patent is either 20 years from the earliest filing date or 17 years from the issue date, whichever is longer.  Thus, the ‘421 patent’s statutory term expires on Nov 16, 2027, notwithstanding its “earliest filing date” of January 4, 1983.  That is, it will expire more than 44 years after the priority application’s filing date.  Myriad practical issues arise as a result of such an extraordinary delay between patent application filing and patent grant, and further patent expiration.  First, technology that has long ago become commonplace may suddenly be covered by an extant patent having many years of remaining patent term.  Second, the ’421 patent is available as prior art under pre-AIA 35 U.S.C. § 102(e) with a “prior art date” of January 4, 1983, notwithstanding the fact that it was unknown to the world at large until late 2010.  It will never be known how many patents, in the United States and worldwide, would not have been granted, or whose claim scopes would differ, had they been examined in light of the disclosure of the ‘421 patent during the period of the mid-1980s through 2010.

Patent issuance may be delayed for several reasons.  Delays caused by secrecy orders are caused by actions beyond the control of the patent applicants.  In other situations, however, patent issuance delays are within the control of the applicant, and thus may be more appropriately considered to be unnecessary delays.  For example, unnecessary delays have in the past been caused by the applicant throught the abusive practice of repetitive abandonments and continuation filings.  Judicially created rules and legislatively created statutes such as the “prosecution laches” doctrine and the TRIPS agreement are available to patent examiners, applicants, and the courts to understand and deal with the probable consequences of at least unnecessary delays.  However, the courts have not often been faced with making decisions related to extraordinary delays caused by secrecy orders.

Now, the Delaware and Texas district courts will deal with a unique case where a truly extraordinary delay in patent issuance was beyond the control of the applicant, the delay being the result of a U.S. Army secrecy orders.  While the situation may seem to be unfair to all sued defendants, one can imagine some sort of “intervening rights” defense for patents issued after lifting of secrecy orders.  In such a case, an equitable intervening rights might allow a party whose products infringe a patent issued after a secrecy order has been lifted to continue to use or sell specific products that were made, purchased, or used before the patent issuance under certain conditions.  It remains to be seen whether such an equitable defense will be asserted, and upon what grounds it might rest, and whether the courts will adopt it in any form.  Only the passage of even more time will tell.