Sections 184 and 185 of the Invention Secrecy Act–An Ambiguous and Unnecessary Obstruction to Foreign Patenting

Several recent decisions have revealed an ambiguity in sections 184 and 185 of the Invention Secrecy Act. Section 184 allows the filing of a patent application in a foreign country only upon receipt of a license from the Patent Commissioner or after the expiration of a six-month period which begins when the application is submitted to the United States Patent Office for examination. If this section is violated inadvertently by unlicensed foreign filing within six months of the filing in the United States Patent Office, the Patent Commissioner is empowered to issue a license that retroactively validates the prior foreign application. Section 185, however, states that, “notwithstanding any other provisions of law,” a violation of section 184 will result in the loss of domestic patent rights. This ambiguity has raised the question whether the retroactive license authorized in section 184 can resurrect an unlawful application-unlawful because accompanied by an unlicensed foreign filing-that has already ripened into a purported domestic patent, or whether such a license is effective only if issued while the domestic application is pending.