1997 Sabing H. Lee.

Associate, Knobbe, Martens, Olson & Bear, LLP, Newport Beach, CA; J.D., 1997, Boalt Hall School of Law, University of California at Berkeley; B.S. & M.S., 1994, University of California, Los Angeles. Special thanks to Professor Robert P. Merges and Stephan W. Gruen for their comments and suggestions.

1. Invention Secrecy Act of 1951, ch. 4, 66 Stat. 3 (1952) (codified as amended at 35 U.S.C. 181-188 (1994)).

2. 35 U.S.C. 181 para. 3 (1994).

3. See 35 U.S.C. 182, 186 (1994).

4. Act of Oct. 6, 1917, ch. 95, 40 Stat. 394 (1917).

5. President Truman declared a national emergency on December 16, 1950. Proclamation No. 2914, 3 C.F.R. 99 (1949-1953). This national emergency was terminated by the National Emergencies Act of 1976, Pub. L. No. 94-412, Title I, 101, 90 Stat. 1255 (1976).

6. See discussion infra Parts II.A-C.

7. The United States still faces potential threats from countries such as France, China, Japan, Israel, Iraq, and Russia. See Ralph Vartabedian, Most Promising U.S. Technology Still Kept Secret, L.A. TIMES, July 13, 1993, at A1, A12. However, none of these threats has ever created a serious threat of actual conflict reaching American soil.

8. See Steven Aftergood, Invention Secrecy Criteria Disclosed, SECRECY & GOV'T BULL., Nov. 1994 (Federation of American Scientists) (visited Nov. 23, 1997) <http://www.awpi.com/IntelWeb/US/S-GB/041.html>.

9. During World War II, the number of secrecy orders in effect peaked at 8,293 on December 31, 1944. See H.R. REP. NO. 1540, 96th Cong., 2d Sess. 37 (1980). From 1951 to 1958, the number of secrecy orders rose from 3,435 to 6,149, and remained between 4,100 and 5,100 for the next twenty years. See id. at 1-2.

10. See Even After Cold War, Patents Remain Secret, INSIDE R&D (Technical Insights, Inc.), June 3, 1992, available in 1992 WL 2799306.

11. See id.; see also Gary L. Hausken, The Value of a Secret: Compensation for Imposition of Secrecy Orders Under the Invention Secrecy Act, 119 MIL. L. REV. 201, 202 (1988) (citing Interview with John Raubitchek, Patents, Copyrights, and Trademarks Division, Office of the Judge Advocate General, Department of the Army (Feb. 26, 1987)).

12. See Even After Cold War, Patents Remain Secret, supra note 10.

13. See Edmund Andrews, Cold War Secrecy Still Shrouds Inventions, S.F. CHRON., May 23, 1992, at A23. This is in comparison to 43 of 250 secrecy orders in 1979. See id.

14. See id.; see Vartabedian, supra note 7, at A12 (the push toward commercial applications is signified by President Clinton's proposed twenty billion dollar effort to help convert the defense industry to commercial enterprises).

15. S. REP. NO. 119, 65th Cong., 1st Sess. at 1 (1917).

16. Act of Oct. 6, 1917, ch. 95, 40 Stat. 394 (1917).

17. Id.

18. See S. REP. NO. 119, supra note 15, at 1.

19. See Act of Oct. 6, 1917, ch. 95, 40 Stat. 394 (1917).

20. See id.

21. S. REP. NO. 119, supra note 15, at 1.

22. Act of Oct. 6, 1917, ch. 95, 40 Stat. 394 (1917).

23. Act of July 1, 1940, ch. 501, 54 Stat. 710 (1940).

24. See id.

25. Act of June 16, 1942, ch. 415, 56 Stat. 370 (1942).

26. Act of Aug. 21, 1941, ch. 393, 55 Stat. 657 (1941).

27. See id.

28. See id.

29. See id.

30. See H.R. REP. NO. 1540, supra note 9, at 37.

31. See id.

32. See id.

33. See 37 C.F.R. 5.1; 35 U.S.C. 181 para. 3; Aftergood, supra note 8.

34. See H.R. REP. NO. 1540, supra note 9, at 46.

35. See id. at 47.

36. See id. at 46.

37. See id. at 50.

38. See S. REP. NO. 1001, H.R. REP. NO. 1028, 82d Cong., 1st Sess. (1951), reprinted in 1952 U.S.C.C.A.N. 1322.

39. The formal end to the hostilities was declared by President Truman on December 31, 1946. Proclamation No. 2714, 3 C.F.R. 99 (1943-1948), reprinted in 61 Stat. 1048 (1946). The national emergency declared in preparation for World War II was terminated on April 28, 1952. Proclamation No. 2974, 3 C.F.R. 158 (1949-1953), reprinted in 66 Stat. ch. 31 (1952).

40. See H.R. REP. NO. 1540, supra note 9, at 47.

41. See id. at 47-48.

42. See id. at 47.

43. See id. at 1.

44. Invention Secrecy Act of 1951, ch. 4 10 & 11, 66 Stat. 3 (1952) (codified as amended at 35 U.S.C. 181-188 (1994)).

45. 35 U.S.C. 181 para. 4 (1994).

46. Id.

47. Id.

48. See supra note 5.

49. See 35 U.S.C. 181 para. 3 (1994).

50. See 35 U.S.C. 184 (1994).

51. 35 U.S.C. 183 (1994) (emphasis added).

52. See S. REP. NO. 1001, H.R. REP. NO. 1028, supra note 38, reprinted in 1952 U.S.C.C.A.N. at 1323; see also H.R. REP. NO. 1540, supra note 9.

53. The Government's Classification of Private Ideas: Hearings Before a Subcomm. of the House Comm. on Government Operations, 96th Cong., 2d Sess. (1980) [hereinafter Hearings].

54. H.R. REP. NO. 1540, supra note 9.

55. In 1979, government agencies were required to determine affirmatively for each patent application subject to secrecy order that secrecy was still required. The review of these patent applications resulted in the renewal of 3,300 orders. See Hearings, supra note 53, at 19.

56. S. REP. NO. 1001, H.R. REP. NO. 1028, supra note 38, reprinted in 1952 U.S.C.C.A.N. at 1323-24.

57. See id. at 1322.

58. See H.R. REP. NO. 1540, supra note 53, at 50; see also supra text accompanying notes 37-39.

59. Congress relied extensively on the input of the Department of Defense in deciding to create the Invention Secrecy Act. See id. at 1, 50, 55; S. REP. NO. 1001, H.R. REP. NO. 1028, supra note 38, reprinted in 1952 U.S.C.C.A.N. at 1323-24.

60. For an analysis of the sufficiency of the old rationale with respect to modern secrecy orders, see discussion infra Part II.D.1.

61. See H.R. REP. NO. 1540, supra note 9, at 3.

62. Id. at 32.

63. See discussion supra Part I.A.

64. See U.S. CONST. art. I, 8, cl. 8.

65. See H.R. REP. NO. 1540, supra note 9, at 1.

66. Id. at 2.

67. See id. at 21.

68. See H.R. REP. NO. 1540, supra note 9.

69. See 35 U.S.C. 183 (1994). When the peacetime provisions were introduced, many of the rules became more sympathetic to inventors by creating the right to appeal a secrecy order and loosening the restrictions on foreign filings and receiving compensation. See supra Part I.C.

70. This is not to say that all legislation restricting inventors' rights in the name of national security can be justified. While the mere imposition of a secrecy order may be justifiable, the procedures used by the government must not be unduly burdensome. For a discussion of whether the mechanics of invention secrecy do in fact minimize the burdens on inventors, see infra Part III.

71. Grant v. Raymond, 31 U.S. (6 Pet.) 218, 242 (1832).

72. See H.R. REP. NO. 1540, supra note 9, at 7.

73. See discussion supra Part I.D.

74. See U.S. CONST. art. I, 8, cl. 8.

75. Support for a similar approach may be found in the First Amendment cases dealing with prior restraints. In such cases, infringement upon a First Amendment right by a prior restraint can only be justified when the disclosure creates direct, immediate, and irreparable harm. See discussion infra Part III.B.2.

76. See H.R. REP. NO. 1540, supra note 9, at 3 (emphasis added).

77. See discussion supra Part I.A.-C.

78. 35 U.S.C. 181 para. 2 (1997). For a discussion of the standards used in imposing secrecy orders, see discussion infra Part II.A.

79. See discussion infra Part II.A.

80. S. REP. NO. 1001, H.R. REP. NO. 1028, supra note 38, reprinted in 1952 U.S.C.C.A.N. at 1321.

81. Hearings, supra note 53, at 450 (prepared statement of the Armed Services Patent Advisory Board (ASPAB), Department of Defense).

82. 3 C.F.R. 303 (1943-1948).

83. See 37 C.F.R. 7.1(a) (1996).

84. 35 U.S.C. 181 para. 1 (1994).

85. See Hearings, supra note 53, at 451 (prepared statement of the Armed Services Patent Advisory Board (ASPAB), Department of Defense); id. at 740 (Department of the Army, Office of the Judge Advocate General, Memorandum for the Record, Subject: Categories of secrecy order cases and related claims (Feb. 27. 1980)).

86. Exec. Order No. 12,065, 43 Fed. Reg. 28,949 (Section 1-104) (1978).

87. See Hearings, supra note 53, at 740 (Department of the Army, Office of the Judge Advocate General, Memorandum for the Record, Subject: Categories of secrecy order cases and related claims (Feb. 27. 1980)).

88. See id.

89. See id.

90. See id. at 741. In some cases the Patent Office may refer the application to the defense agencies before being notified to issue the secrecy order. In these cases the Patent Office will send an abbreviated disclosure to the agencies, calling the agency's attention to the existence of an application relating to a particular contract. See id.

91. See discussion infra Part III.B.2.a.

92. See Manual of Patent Examining Procedure 115 (6th ed. 1996), at 100-09 [hereinafter MPEP] ("[f]or those applications in which the Government has a property interest, responsibility for notifying the Commissioner of the need for a Secrecy Order resides with the agency having that interest").

93. See Hearings, supra note 53, at 451 (prepared statement of the Armed Services Patent Advisory Board (ASPAB), Department of Defense, before the Government Information and Individual Rights Subcommittee of the House Committee on Government Operations).

94. See 37 C.F.R. 5.2(a) (1996).

95. 35 U.S.C. 181 para. 2, 3 (1994).

96. See Hearings, supra note 53, at 2 (statement of Rene D. Tegtmeyer, Assistant Commissioner for Patents, Patent and Trademark Office, Department of Commerce).

97. See H.R. REP. NO. 1540, supra note 9, at 17.

98. See Hearings, supra note 53, at 2-3 (statement of Rene D. Tegtmeyer, Assistant Commissioner for Patents, Patent and Trademark Office, Department of Commerce).

99. MPEP 115, at 100-10 (6th ed. 1996).

100. See id.

101. See id.

102. ARMED SERVICES PATENT ADVISORY BOARD, PATENT SECURITY CATEGORY REVIEW LIST (1971) [hereinafter ASPAB LIST]. The list was declassified in 1994 at the Freedom of Information Act request of Michael Ravnitzky. See Aftergood, supra note 8. About 3% of all patent applications fall into areas identified by the list. See id.

103. See ASPAB LIST.

104. See id.

105. See Hearings, supra note 53, at 12 (statement of Rene D. Tegtmeyer, Assistant Commissioner for Patents, Patent and Trademark Office, Department of Commerce).

106. Codified at 42 U.S.C. 2181-82 (1994).

107. 37 C.F.R. 5.1 (1996).

108. 35 U.S.C. 181 para. 3 (1994) (emphasis added).

109. See Aftergood, supra note 8.

110. See Hearings, supra note 53, at 451 (prepared statement of the Armed Services Patent Advisory Board (ASPAB), Department of Defense).

111. See MPEP 115, at 100-09.

112. See id. 130, at 100-14.

113. See id.

114. See id.

115. See id.

116. See id.

117. See Hearings, supra note 53, at 176 (letter from Sidney A. Diamond, Commissioner for Patents and Trademarks, U.S. Patent and Trademark Office, to Richard Preyer, Chairman, Government Information and Individual Rights Subcommittee of the Committee on Government Operations (May 3, 1980)).

118. See 35 U.S.C. 181 para. 1, 3 (1994).

119. Id.

120. Hearings, supra note 53, at 128 (notice of secrecy order from Director, Special Laws Administration Group, Patent and Trademark Office).

121. See MPEP 120, at 100-09.

122. See id. at 100-10.

123. See id. at 100-09.

124. See id. at 100-10.

125. See id. at 100-09.

126. See id. at 100-10.

127. See id. at 100-09. However, these secrecy orders often contain a "Permit A" which relaxes the disclosure restrictions. See id. at 100-10.

128. See 35 U.S.C. 182 (1994).

129. 35 U.S.C. 186 (1994).

130. See 35 U.S.C. 181 para. 4 (1994).

131. Id.

132. Id.

133. See Hearings, supra note 53, at 458 (prepared statement of the Armed Services Patent Advisory Board (ASPAB), Department of Defense).

134. See 37 C.F.R. 5.3(c) (1996).

135. See Hearings, supra note 53, at 741 (Department of the Army, Office of the Judge Advocate General, Memorandum for the Record, Subject: Categories of secrecy order cases and related claims (Feb. 27, 1980)).

136. 35 U.S.C. 183 (1994).

137. See MPEP 120, at 100-11 (6th ed. 1996).

138. See 37 C.F.R. 5.4 (1996).

139. Id.

140. See 35 U.S.C. 181 para. 3 (1994).

141. See 37 C.F.R. 5.8 (1996).

142. See id.

143. See 37 C.F.R. 5.5 (1996).

144. See Hearings, supra note 53, at 3 (prepared statement of the Armed Services Patent Advisory Board (ASPAB), Department of Defense).

145. 35 U.S.C. 183 (1994)

146. See id.

147. See id.

148. See id.

149. See id.

150. See id.

151. See Robinson v. United States, 236 F.2d 24, 26 (2d Cir. 1956).

152. See 35 U.S.C. 183 (1994).

153. Compensation for government infringement of patents may also be relevant to this determination. An inventor may sue the government for infringement of a patent under the provisions of 28 U.S.C. 1498 for reasonable and entire compensation. See 28 U.S.C. 1498(a) (1994). Section 183 of the Invention Secrecy Act implicitly recognizes the similarities in the two types of compensation by stating: "In a suit under the provisions of this section the United States may avail itself of all defenses it may plead in an action under section 1498 of title 28." 35 U.S.C. 183 (1994). For a discussion of damages for government infringement, see infra text accompanying notes 371-83.

154. Constant v. United States (Constant I) 617 F.2d 239, 239-44 (Ct. Cl. 1980).

155. Id. at 243 n.10.

156. See id. at 242.

157. See id.

158. See id. at 244.

159. Id.

160. See Constant v. United States (Constant II), 1 Cl. Ct. 600, 609 (1982), aff'd, 714 F.2d 162 (Fed. Cir. 1983).

161. See Farrand Optical Co. v. United States, 197 F. Supp. 756, 773 (S.D.N.Y. 1961), modified, 325 U.S. 328 (2d Cir. 1963).

162. Id. at 777 n.2.

163. See Constant II, 1 Cl. Ct. at 609. A further discussion of the compensation issue is contained infra Part II.D.3. That part examines whether the requirement of proof of actual damages is fair to inventors whose inventions are suppressed by secrecy order.

164. The discussion in this part assumes that the provisions of the Act are constitutional. For a discussion of the Act's potential constitutional problems, see discussion infra Part III.

165. 35 U.S.C. 181 para. 1 (1994) (emphasis added).

166. 35 U.S.C. 181 para. 3 (emphasis added).

167. See supra text accompanying notes 8-14; see also Hearings, supra note 53, at 453 (prepared statement of the Armed Services Patent Advisory Board (ASPAB), Department of Defense). In 1979, the Commissioner of Patents and Trademarks estimated that about 10-20% of secrecy orders were imposed on applications in which the government had no property interest. See id. at 455.

168. See discussion supra part II.A.

169. See discussion supra part II.D.

170. For a general discussion of the problems of cryptology, see David Kahn, Cryptology Goes Public, FOREIGN AFF., Fall 1979, at 141; see also H.R. REP. NO. 1540, supra note 9, at 62-120.

171. See H.R. REP. NO. 1540, supra note 9, at 70.

172. For a discussion of whether the compensation provisions themselves are sufficient, see discussion infra Part III.D.3.

173. 35 U.S.C. 181 para. 4 (1994).

174. General Agreement on Tariffs & Trade, Oct. 30, 1947, 61 Stat. A-11, T.I.A.S. 1700, 55 U.N.T.S. 194.

175. See 35 U.S.C. 154(a)(2) (1994).

176. See 35 U.S.C. 154(b)(1) (1994).

177. See S. REP. NO. 412, 103d Cong., 2d Sess. (1994).

178. At the time of the 1980 Hearings, the longest secrecy order still in effect was issued in 1942 on a 1940 application. See H.R. REP. NO. 1540, supra note 9, at 165.

179. For a discussion of the First Amendment problems associated with these provisions, see discussion infra Part III.

180. See discussion supra Part III.C.1.

181. A further discussion of the fairness of these procedures is contained in the procedural due process analysis, discussed infra Part III.C.1.

182. 5 U.S.C. 702 (1994).

183. 5 U.S.C. 706(2)(A) (1994).

184. Henry v. United States Dept. of Navy, 77 F.3d 271, 272 (8th Cir. 1996).

185. See 5 U.S.C. 701(a)(2) (1994).

186. 486 U.S. 592 (1988).

187. See id. at 601.

188. Section 701(a)(2) of the APA does not automatically preclude judicial review of constitutional claims. The Court in Webster stated that Congress' intent to preclude judicial review of constitutional claims must be clear. See id. at 603. Absent such a clear intent, a petitioner may still bring claims challenging the constitutionality of agency action.

189. See 35 U.S.C. 183 (1994); discussion supra Part III.C.2.

190. See H.R. REP. NO. 1540, supra note 9, at 6.

191. See id.

192. See id.

193. Id. at 8.

194. See Constant v. United States, 617 F.2d 239, 244 (Ct. Cl. 1980); Constant v. United States, 1 Cl. Ct. 600, 609 (1982), aff'd, 714 F.2d 162 (Fed. Cir. 1983).

195. Supreme Court Asked to Review Intellectual Property Decisions, 26 PATENT, TRADEMARK & COPYRIGHT J. 570 (1983).

196. See H.R. REP. NO. 1540, supra note 9, at 29.

197. Id. at 28.

198. See 35 U.S.C. 183 (1994).

199. See H.R. REP. NO. 1540, supra note 9, at 7.

200. See 35 U.S.C. 183 (1994).

201. See H.R. REP. NO. 1540, supra note 9, at 29 n.54.

202. 42 U.S.C. 2181(a) (1994).

203. 42 U.S.C. 2187(c) (1994).

204. See Hobbs v. United States, 376 F.2d 488, 493 (5th Cir. 1967) (holding that even though the government had obtained shop rights in an invention, the inventor still retained rights in the invention which entitled him to some amount of just compensation).

205. See id.

206. See 42 U.S.C. 2187(a) (1994).

207. See H.R. REP. NO. 1540, supra note 9, at 27.

208. Hearings, supra note 53, at 252 (testimony of H. Miles Foy, Senior Attorney-Adviser, Office of Legal Counsel).

209. See H.R. REP. NO. 1540, supra note 9, at 2; U.S. CONG., OFFICE OF TECHNOLOGY ASSESSMENT, Science, Technology, and the First Amendment, OTA-CIT-369 (Jan. 1988) 48 [hereinafter OTA Report].

210. U.S. CONST. art. I, 8, cl. 1.

211. U.S. CONST. art. I, 8, cl. 8.

212. See Kohl v. United States, 91 U.S. 367, 372 (1875).

213. See Hawaii Housing Auth. v. Midkiff, 467 U.S. 229, 241 (1984). Although the Constitution does not explicitly recognize the power of eminent domain, the Supreme Court has interpreted the Fifth Amendment Takings Clause to be an implicit recognition of the eminent domain power, which was specifically created as a check on the government's exercise of this power. See Kohl, 91 U.S. at 372.

214. See discussion infra Part III.C.2.

215. Aptheker v. Secretary of State, 378 U.S. 500, 509 (1964) (quoting Cantwell v. Connecticut, 310 U.S. 296, 304 (1940)). In Aptheker, the issue before the Court was the constitutionality of section 6 of the Subversive Activities Control Act of 1950, which made it a felony for members of a Communist organization to apply for, use or attempt to use a passport. See id. at 501-02. Despite the fact that the legislation was based on Congress' power to safeguard the national security, the Court held that that the evil Congress sought to control swept "too widely and too indiscriminately across the [right to travel] liberty guaranteed in the Fifth Amendment." Id. at 514.

216. United States v. Robel, 389 U.S. 258, 264 (1967) (holding a section of the Subversive Activities Control Act making it unlawful for a member of a Communist-action organization to engage in any employment in any defense facility unconstitutional because it proscribes rights of association protected by the First Amendment).

217. See 35 U.S.C. 181, 182, 186 (1994).

218. U.S. CONST. amend. I.

219. See OTA Report, supra note 209, at 38.

220. Remember that protection under the First Amendment is a technical term, determinative mainly of the level of scrutiny to be applied to restrictions imposed on the expression. Further, whether speech is classified as protected or not is only of consequence in a subsequent punishment analysis, and not in a prior restraint analysis. Despite the apparent irrelevance of the protection issue to prior restraints, the discussion of protection precedes the prior restraint analysis in order to emphasize the constitutional importance of scientific expression and to provide background in the form of several national security-related cases that are discussed in the context of First Amendment protection.

221. See supra text accompanying notes 117-20.

222. See OTA Report, supra note 209, at 37.

223. See id.

224. See id.

225. See Steven Goldberg, The Constitutional Status of American Science, 1979 U. ILL. L.F. at 1-6.

226. See OTA Report, supra note 209, at 37.

227. See generally Abrams v. United States, 250 U.S. 616, 630 (Holmes, J., dissenting).

228. A. DEVOLPI ET AL., BORN SECRET: THE H-BOMB, THE PROGRESSIVE CASE, AND NATIONAL SECURITY 12 (1981).

229. See id. at 5.

230. See id. at 12; see also Bernstein v. United States Department of State, 922 F. Supp. 1426, 1436 n.17 (N.D. Cal. 1996) (holding that source code is protected speech deserving of a high degree of constitutional protection); but see United States v. The Progressive, Inc., 467 F. Supp. 990, 994 (W.D. Wis. 1979) ("this Court can find no plausible reason why the public needs to know the technical details about hydrogen bomb construction to carry on an informed debate on this issue"), discussed infra part III.B.3.

231. OTA Report, supra note 209, at 38.

232. See 35 U.S.C. 112 (1994).

233. In re Nelson and Shabica, 280 F.2d 172, 182 (C.C.P.A. 1960).

234. See, e.g., Chaplinsky v. New Hampshire, 315 U.S. 568, 571-72 (1942).

235. See generally LAURENCE H. TRIBE, AMERICAN CONSTITUTIONAL LAW 12-9 to 12-17, at 841-928 (2d ed. 1988).

236. See id. 12-18, at 928.

237. One commentator has argued that the expression contained in a patent application should be classified as commercial speech, because a patent protects an inventor's rights while he is selling his invention for profit. See Lee Ann Gilbert, Patent Secrecy Orders: The Unconstitutionality of Interference in Civilian Cryptography Under Present Procedures, 22 SANTA CLARA L. REV. 358-61 (1982). However, this analysis was used only as a "worst case" scenario to demonstrate that even under a lower standard of protection, the Invention Secrecy Act would still be found unconstitutional. Besides, the connection between scientific expression and commercial speech is tenuous at best, for the reason that commercial speech has generally been interpreted to cover only activities akin to advertising. See, e.g., Central Hudson Gas v. Public Service Comm'n, 447 U.S. 557 (1980).

238. Schenck v. United States, 249 U.S. 47 (1919).

239. See id. at 51. The document contained statements such as: "Do not submit to intimidation"; "If you do not assert and support your rights, you are helping to deny or disparage rights which it is the solemn duty of all citizens and residents of the United States to retain"; and "You must do your share to maintain, support and uphold the rights of the people of this country." Id.

240. See id. at 49.

241. See id. at 52.

242. Id.

243. For additional opinions by Justice Holmes regarding the clear and present danger test, see Frohwerk v. United States, 249 U.S. 204 (1919); see generally, Debs v. United States, 249 U.S. 211 (1919).

244. Abrams v. United States, 250 U.S. 616, 628 (1919) (Holmes, J., dissenting) (emphasis added).

245. This is not to say that the Court would never consider the intent of the speaker. See Debs v. United States, 249 U.S. 211 (1919) (jury was instructed that they could not find defendant guilty unless the words had as their natural tendency and reasonably probable effect to obstruct the recruiting service and unless the defendant had the specific intent to do so in mind). The intent of the speaker need not be examined if there was an immediate danger.

246. Schenck, 249 U.S. at 52.

247. For an argument that in certain situations scientific expression can satisfy an "imminence" test, see United States v. The Progressive, Inc., 467 F. Supp. 990, 996 (W.D. Wis. 1979) (holding that publication teaching how to make a hydrogen bomb does create a threat of direct, immediate, and irreparable injury), discussed infra text accompanying notes 286-88.

248. Dennis v. United States, 341 U.S. 494 (1951).

249. Id. at 510 (citing Dennis v. United States, 183 F.2d 201, 212 (1950) (L. Hand, C.J.)).

250. 395 U.S. 444 (1969).

251. Id. at 447.

252. See id. at 448-49.

253. See Texas v. Johnson, 491 U.S. 397, 409 (1989) (defining the Brandenburg test in terms of "expression," not advocacy).

254. Dennis can still be applied in other contexts, such as in considering whether the presumption against prior restraints can be overcome. See Nebraska Press Ass'n v. Stuart, 427 U.S. 539 (1976), discussed infra note 298.

255. See discussion infra Part III.B.2.b.

256. See discussion infra Part III.B.3.

257. Alexander v. United States, 509 U.S. 544, 550 (1993) (citation omitted).

258. Near v. Minnesota, 283 U.S. 697, 713 (1931) (holding that a statute providing for the abatement, as a public nuisance, of a malicious, scandalous and defamatory periodical was an unconstitutional restraint on publication).

259. See New York Times Co. v. United States, 403 U.S. 713, 714 (1971) (per curiam) (citations omitted).

260. Note that this analysis will only apply to private inventors. The Court has repeatedly held that where an individual is in a position of trust with the government, an injunction against dissemination by that person may be appropriate even without proof of a substantial danger. See Hearings, supra note 53, at 246 (testimony of H. Miles Foy, Senior Attorney-Adviser, Office of Legal Counsel).

261. See, e.g., Freedman v. Maryland, 380 U.S. 51 (1965).

262. See, e.g., Near v. Minnesota, 283 U.S. 697 (1931).

263. See discussion supra Part III.A.

264. 35 U.S.C. 181 para. 1, 3 (1994).

265. Hearings, supra note 53, at 126 (notice of secrecy order from Director, Special Laws Administration Group, Patent and Trademark Office) (emphasis added).

266. 37 C.F.R. 5.2 (1996).

267. Inventors do, however, have the expectation that their issued patents will be printed by the Patent Office. This publication cannot be considered individual expression, nor can inventors assert a mandatory right to the publication, because the Commissioner alone possesses the discretion to decide whether patents should be published or not. See 35 U.S.C. 11 (1994) ("[t]he Commissioner may print, or cause to be printed ¼ [p]atents, including specifications and drawings, together with copies of the same") (emphasis added).

268. Pittsburgh Press Co. v. Pittsburgh Comm'n on Human Relations, 413 U.S. 376, 390 (1972).

269. Near v. Minnesota, 283 U.S. 697, 711 (1931).

270. See New York Times Co. v. United States, 403 U.S. 713, 714 (1974) (per curiam) (citations omitted).

271. See Near v. Minnesota, 283 U.S. at 716 (citations omitted).

272. 403 U.S. 713 (1974).

273. Id. at 714.

274. See id.

275. Justice Marshall also concurred in the decision, but focused on a separation of powers rationale rather a First Amendment analysis in reaching his decision. See id. at 740-41 (Marshall, J., concurring).

276. Id. at 719 (Black, J., concurring).

277. Id. at 724 (Douglas, J., concurring).

278. Id. at 726-27 (Brennan, J., concurring).

279. Id. at 730 (Stewart, J., joined by White, J., concurring) (emphasis added).

280. This standard is appropriate because Justices Black and Douglas supported an even harsher rule against prior restraints.

281. See supra text accompanying notes 286-88.

282. 467 F. Supp. 990, 998 (W.D. Wis. 1979).

283. See id.

284. See id. at 999.

285. Id. at 1000 (citing New York Times Co. v. United States, 403 U.S. 713, 730 (1974) (Stewart, J., concurring)).

286. Id. at 995.

287. Id. at 996.

288. In some respects, even though Progressive purports to apply the New York Times test, in fact it appears to have applied a test considering the gravity of the harm, such as the one used in Dennis v. United States. See supra text accompanying notes 248-49. There is support from the Supreme Court for using such a method. In Nebraska Press Association v. Stuart, 427 U.S. 539, 562 (1976), Chief Justice Burger applied the test used in United States v. Dennis, where the Court shall determine whether "the gravity of the 'evil,' discounted by its improbability, justifies such invasion of free speech as is necessary to avoid the danger." 183 F.2d 201, 212 (2d. Cir. 1950), aff'd, 341 U.S. 494 (1951). Nebraska Press, however, dealt specifically with the problems of containing trial publicity. See 427 U.S. at 542. It is therefore unclear whether the Supreme Court would condone an application of the Dennis test to issues of national security.

289. See New York Times, 403 U.S. at 720 (Black, J., concurring) (emphasizing the importance in maintaining "the opportunity for free political discussion" (quoting De Jonge v. Oregon, 299 U.S. 353, 365 (1937) (Hughes, C.J.)); id. at 724 (Douglas, J., concurring) (stressing the importance of promoting debate over Vietnam policy).

290. See id. at 717 (Black, J., concurring) ("Both the history and language of the First Amendment support the view that the press must be left free to publish news, whatever the source, without censorship, injunctions, or prior restraints"); id. at 730-31 (White, J., concurring) ("I concur in today's judgments, but only because of the concededly extraordinary protection against prior restraints enjoyed by the press under our constitutional system").

291. See supra text accompanying notes 225-30.

292. New York Times, 403 U.S. at 731 (White, J., concurring).

293. See id. at 730 (Stewart, J., concurring).

294. Progressive, 467 F. Supp. at 994.

295. Id.

296. Department of Navy v. Egan, 484 U.S. 518, 530 (1988) (citations omitted).

297. See 35 U.S.C. 181 (1994).

298. 35 U.S.C. 182 (1994).

299. 35 U.S.C. 186 (1994).

300. See Alexander v. United States, 509 U.S. 544, 554 (1993). The reason for the harsher treatment given to prior restraints derives from the particular danger that prior restraints pose to expression:

A system of prior restraint is in many ways more inhibiting than a system of subsequent punishment: It is likely to bring under government scrutiny a far wider range of expression; it shuts off communication before it takes place; suppression by a stroke of the pen is more likely to be applied than suppression through a criminal process; the procedures do not require attention to the safeguards of the criminal process; the system allows less opportunity for public appraisal and criticism; the dynamics of the system drive toward excesses, as the history of all censorship shows.

Nebraska Press Ass'n v. Stuart, 427 U.S. 539, 589-90 (1976) (Brennan, J., concurring) (citing T. EMERSON, THE SYSTEM OF FREEDOM OF EXPRESSION 506 (1970)).

301. Even if the Invention Secrecy Act does create a prior restraint, the analysis of subsequent punishments still makes for a useful academic discussion.

302. See discussion supra Part III.B.

303. See Denver Area Educational Telecommunications Consortium, Inc. v. Federal Communications Commission, 116 S.Ct. 2374, 2413 (1996) (Kennedy, J., concurring and dissenting). Even if scientific expression is completely unprotected, the government may still not impose content-based restrictions on the expression. See R.A.V. v. City of St. Paul, 505 U.S. 377, 383-84 (1992).

304. See TRIBE, supra note 235, 12-3, at 803.

305. See Widmar v. Vincent, 454 U.S. 263, 269-70 (1981).

306. Snepp v. United States, 444 U.S. 507, 509 n.3 (1980).

307. 389 U.S. 258 (1967). Robel involved section 5(a)(1)(D) of the Subversive Activities Control Act, which made it unlawful for any member of a Communist-action organization "to engage in any employment in any defense facility." Id. at 259-60 (citing 64 Stat. 992, 50 U.S.C. 784(a)(1)(D)). The purpose of this section was "to reduce the threat of sabotage and espionage in the Nation's defense plants." Id. at 264. In finding the section unconstitutional, the Court emphasized that section 5(a)(1)(D) "cut deeply into the right of association," and put the appellee "to the choice of surrendering his organizational affiliation, regardless of whether his membership threatened the security of a defense facility." Id. at 264-65.

308. Id. at 267-68 n.20.

309. See discussion supra Part III.

310. See Broadrick v. Oklahoma, 413 U.S. 601 (1973) (requiring overbreadth to be substantial).

311. See Snepp v. United States, 444 U.S. 507, 509 n.3 (1980).

312. See Department of Navy v. Egan, 484 U.S. 518, 530 (1988) (citations omitted).

313. Note the difference between deferring to an agency determination that the national security interest is compelling, discussed herein, with deferring to an agency determination that publication or disclosure creates direct, immediate, and irreparable damage, discussed supra text accompanying notes 296-97. In the present situation, it is appropriate to defer to the agency's judgment because the mere act of imposing a secrecy order reflects the agency's belief that there is a compelling interest in protecting the national security. In the situation before, it was inappropriate to defer to the agency's judgment because the agency had never made a determination that there was direct, immediate, and irreparable damage. Also note that the deference given to national security interests does have its limits. In United States v. Robel, the Court rejected an argument that Congress' war making power gave it broad discretion to enact a statute limiting First Amendment rights: "[T]he phrase 'war power' cannot be invoked as a talismanic incantation to support any exercise of congressional power which can be brought within its ambit. '[E]ven the war power does not remove constitutional limitations safeguarding essential liberties.'" Robel, 389 U.S. at 263-64 (quoting Home Bldg. & Loan Ass'n v. Blaisdell, 290 U.S. 398, 426 (1934)). Although Robel involved congressional legislation and not executive decision-making, the significance of this statement should not be ignored. Government action relying on the national security interest should not be exercised indiscriminately. When the government agency uses its discretion to impose a secrecy order on an invention, it must take care not to overly burden First Amendment liberties.

314. See supra text accompanying note 120.

315. Because strict scrutiny was found to be satisfied, it is unnecessary to go into great detail of the other arguments the government could have made. Suffice it to say that the government could also have relied on the nonpolitical nature of the expression to argue that a lesser standard of review should apply. The basis for such an argument would be that the penalty provisions are not in fact content-based regulations. Although the government action proscribes the expression on the basis of the particular content of the patent applications, the government is not actually concerned with the message of the expression. Rather, the government is only concerned with the effect that the speech would have on the national security. In cases involving content-neutral regulations on speech, a lesser standard of review applies. See generally TRIBE, supra note 235, 12-23, at 977-86.

316. U.S. CONST. amend. V.

317. United States v. Salerno, 481 U.S. 739, 746 (1987) (citations omitted).

318. A review of the substantive due process case law is beyond the scope of this article. Suffice it to say that the Court has taken an extremely limited view of what types of rights are deemed fundamental in order to receive substantive due process protection. See Rochin v. California, 342 U.S. 165, 172 (1952); Palko v. Connecticut, 302 U.S. 319, 325-26 (1937).

319. See Patlex Corp. v. Mossinghoff, 758 F.2d 594, 599 (Fed. Cir. 1985); Consolidated Fruit Jar Co. v. Wright, 94 U.S. 92, 96 (1876) ("[A] patent for an invention is as much property as a patent for land."); 35 U.S.C. 261 (1994) ("[S]ubject to the provisions of this title, patents shall have the attributes of personal property").

320. Board of Regents of State Colleges v. Roth, 408 U.S. 564, 571-72 (1972) (holding that a non-tenured university professor who was not rehired had no property interest in employment at the university because the statutory terms of the professor's employment set out a specified end date).

321. Id. at 576.

322. Id. at 577.

323. The primary benefit of holding a patent is the ability to exclude others from making, using, offering to sell or selling the subject matter of the patent. See 35 U.S.C. 271 (1994). This exclusive property interest is only created once the patent is issued; an inventor cannot sue another for infringement based on an otherwise allowable patent application.

324. See 35 U.S.C. 181 para. 1, 3 (1994).

325. 35 U.S.C. 181 para. 1 (1994).

326. See 35 U.S.C. 181 para. 1, 3 (1994).

327. This view is supported by Court decisions in which an invention has been deemed to be private property for the purpose of eminent domain. See infra text accompanying note 351; see also Ruckelhaus v. Monsanto, 467 U.S. 986, 1001 (1984) (applying the same definition of property in a Takings Clause analysis as has been used in the procedural due process context).

328. Mathews v. Eldridge, 424 U.S. 319, 333 (1976) (citations omitted).

329. See 35 U.S.C. 181 (1994).

330. See 37 C.F.R. 5.5 (1996).

331. See 37 C.F.R. 5.4 (1996).

332. See 35 U.S.C. 183 (1994).

333. Morrissey v. Brewer, 408 U.S. 471, 481 (1972).

334. Eldridge, 424 U.S. at 335 (citations omitted).

335. See 35 U.S.C. 181 (1994).

336. See Goldberg v. Kelly, 397 U.S. 254, 264 (1970).

337. Eldridge, 424 U.S. at 340.

338. Id. at 343.

339. See id. at 344.

340. Id. at 349.

341. Id. at 347.

342. See id.

343. See id. at 348.

344. See Eisen v. Carlisle & Jacquelin, 417 U.S. 156, 174 (1974).

345. See Texaco Inc. v. Short, 454 U.S. 516, 532 (1982) (stating that to satisfy due process, "a legislature need do nothing more than enact and publish the law, and afford the citizenry a reasonable opportunity to familiarize itself with its terms and to comply"). Before the ASPAB List was declassified, some inventors could have argued that they received no notice that their inventions might cover technology contained in the list. Now, however, because the list has been declassified, inventors can no longer make this argument.

346. See supra text accompanying note 120.

347. See 37 C.F.R. 5.8 (1996).

348. See U.S. CONST. amend. V.

349. See Ruckelshaus v. Monsanto Co., 467 U.S. 986, 1000-01 (1984).

350. See U.S. CONST. amend. V (emphasis added).

351. James v. Campbell, 104 U.S. 356, 358 (1881).

352. See Monsanto, 467 U.S. at 1001 (quoting Board of Regents v. Roth, 408 U.S. 564, 577 (1972)).

353. See discussion supra Part III.C.1.a.

354. Constant v. United States (Constant II), 16 Cl. Ct. 629 (1989)

355. See id. at 632.

356. See id.

357. See id. at 633.

358. Id. at 632.

359. See id. at 632-33.

360. Monsanto, 467 U.S. at 1016 (holding that Monsanto's takings claim against the Environmental Protection Agency was not ripe for resolution because Monsanto did not yet pursue compensation authorized under the Tucker Act).

361. See supra text accompanying note 156.

362. See Farrand Optical Co. v. United States, 325 F.2d 328, 335 (2d Cir. 1963) (refusing to allow just compensation interest because such interest is only allowed when the claimant is entitled to just compensation under the Fifth Amendment); Halpern v. United States, 258 F.2d 36, 39-40 (2d Cir. 1958); Constant v. United States, 617 F.2d 239, 241-42 (Ct. Cl. 1980) ("use of the words 'just compensation' in a federal statute does not necessarily mean that a constitutional taking is involved"); see also Radioptics, Inc. v. United States, 621 F.2d 1113, 1126-27 (Ct. Cl. 1980) (holding that a mere prohibition on disclosure or publication of classified information contained in a research proposal, without a prohibition on use of the information, was not a significant enough imposition to cause a taking of the information).

363. Hornback v. United States, 16 F.3d 422, 1993 WL 528066 (Fed. Cir. 1994) (unpublished disposition).

364. Id.

365. See Lucas v. South Carolina Coastal Council, 505 U.S. 1003, 1015-16 (1992) (implying that the Court will forego the typical case-specific inquiry and will find a per se taking where a property owner has been deprived of all economically viable use of his land).

366. See discussion supra Part II.D.3.

367. For further arguments that a patent application cannot be the subject to a Fifth Amendment taking, see generally Hausken, supra note 11, at 245.

368. See Hawaii Housing Auth. v. Midkiff, 467 U.S. 229, 241 (1984).

369. Ruckelhaus v. Monsanto, 467 U.S. 986, 1014 (1984) (quoting Midkiff, 467 U.S. at 240).

370. See H.R. REP. NO. 1540, supra note 9, at 25 (quoting PETER D. ROSENBERG, PATENT LAW FUNDAMENTALS 177 (1977)).

371. Just compensation cannot be measured under cases interpreting that term for purposes of section 183. Constant I recognized that compensation under section 183 should not be limited to damages under an eminent domain theory. See Constant I, 617 F.2d 239, 240, 242 (Ct. Cl. 1980). Therefore, compensation under a takings claim is more limited.

372. 28 U.S.C. 1498(a) (1994).

373. Leesona v. United States, 599 F.2d 958, 966 (Ct. Cl. 1979).

374. See 28 U.S.C 1498(a) (1994).

375. See Leesona, 599 F.2d at 973.

376. Id. at 969.

377. See id. at 966-71.

378. Id. at 973.

379. Id.

380. See Tektronix, Inc. v. United States, 552 F.2d 343, 349 (Ct. Cl. 1977) (citing Georgia-Pacific Corp. v. U.S. Plywood-Champion Papers, Inc., 446 F.2d 295 (2d Cir. 1971)).

381. See Leesona, 599 F.2d at 973.

382. See id. at 979.

383. 28 U.S.C. 1498(a) (1994).

384. Pentagon to Overhaul the Invention Secrecy Act, INTELLIGENCE NEWSLETTER, Apr. 1, 1993 (Indigo Publications).

385. See generally Patent Office Tries to Silence Inventors (National Public Radio broadcast, Sept. 14, 1992)