April 15th, 2010

Hornback v. United States, 601 F.3d 1382 (Fed. Cir. 2010) (RADER, Michel & Folsom, district judge)Hornback04152010

MAJOR ISSUES:  use of invention by United States; Invention Secrecy Act compensation; compensation suits in Court of Federal Claims; 28 U.SC. § 1498

COMMENT.  The Invention Secrecy Act provides for compensation to an inventor for use by the government during a period in which the government imposes a secrecy order, which prevents issuance of a patent, application for foreign patents or publication of the invention.  The inventor can sue in a district court.  In this case, the Federal Circuit holds that the Act does not provide … a cause of action for the government’s use of an invention subject to a secrecy order after the issuance of a patent on that invention ….”  For post-issuance uses, a patent owner must seek compensation under 28 U.S.C. Section 1498, which entails a suit in the Court of Federal Claims.

BORESIGHT ERROR SLOPE SENSOR.  A patent concerned a ” `Real Time Boresight Error Slope Sensor.’  ”  U.S. Pat. No. 6,079,666.  USPatNo6079666  The named inventor and patent owner, Hornback, filed an application on April 25, 1986.  On advice of the U.S. Air Force, the PTO imposed a secrecy order under 35 U.S.C.§ 181 on April 24, 1987.  In September 1987, the PTO issued a notice of allowability.   The secrecy order was rescinded in April 21, 1999.  The patent issued on June 27, 2000.

CROSS REFERENCE.  On the Invention Secrecy Act, see Chisum on Patents §1.06. On suits against the government under 28 U.S.C. § 1498, see Chisum Patent Law Digest 8151; Chisum on Patents 16.06[3].

©2010 Donald S. Chisum - All Rights Reserved

Website design by Bluegrass Internet Services