Author: Adriana L. Burgy
Editor: Amanda K. Murphy, Ph.D.
Foreign filing licenses are pretty routine: file an application and (assuming the application is not marked by a security screener) with the filing receipt or another USPTO official notice, there will be an indication that a foreign filing license is granted. For national security reasons, the U.S. government restricts the export of technical information. As provided in 37 C.F.R. § 5.11, a license is required before filing any application for patent or for the registration of a utility model in a foreign country, foreign patent office, foreign patent agency or any international agency, if the invention was made in the United States, and: (1) an application on the invention was filed in the U.S. less than six months prior to the date on which the foreign application is to be filed, or (2) there has not been an application filed in the U.S. Running afoul of the foreign filing license requirement (35 U.S.C. § 184) may result in any subsequently granted patent being held invalid (35 U.S.C. § 185), and if convicted of willfully disclosing an invention ordered to be held secret, a fine of not more than $10,000 or imprisonment for not more than two years, or both (35 U.S.C. § 186).
There are two ways in which to obtain a foreign filing license: file a petition under 37 C.F.R. § 5.12, or wait for six months after the filing of an application at which time a license on that subject is no longer required as long as no Secrecy Order has been imposed. But, what happens when a filing receipt has not yet been issued in the corresponding U.S. application, or there is no corresponding U.S. application, or the foreign application contains additional subject matter compared to the corresponding U.S. application in which a license has already been issued, or when you just need a foreign filing license quickly.
Fortunately, the USPTO provides an avenue for obtaining an expedited foreign filing license. According to 37 C.F.R. § 5.12(b), a petition can be filed in letter form that includes a fee (under 37 C.F.R. § 1.17(g)), the petitioner’s address, contact information setting forth where the license should be sent if not to the petitioner. If there is a corresponding U.S. application on file, the petition should also include the application number, filing date, inventor(s), and title of the pending application. If there is no corresponding national, international design, or international application filed in the U.S., the petition must also include a legible copy of the material upon which the foreign filing license is requested. The petition can be hand carried, faxed (to Licensing and Review), or submitted via EFS-Web to the USPTO; the Office, however, prefers hand delivery or fax directly to Licensing and Review (571.273.0185). A license will be granted within 3 business days from receipt of the expedited petition, if there is no national security concern.
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