37 CFR § 5.11 — License for filing in, or exporting to, a foreign (MPEP Index) – BlueIron IP
37 CFR § 5.11 License for filing in, or exporting to, a foreign
Source: Patent Rule (37 CFR)BlueIron Update:
This page consolidates MPEP guidance interpreting 37 CFR § 5.11, including 32 rules from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only, it is not legal advice.
Summary
The Foreign Filing License is a mandatory authorization from the Commissioner for Patents required before filing patent applications, modifications, or amendments in foreign jurisdictions.
What this section covers
- Regulatory requirement for obtaining permission before filing patent applications abroad.
- Scope of documents requiring foreign filing license, including modifications, amendments, and divisional applications.
Key obligations
- Secure explicit authorization from the Commissioner for Patents before international patent filing.
- Ensure compliance with USPTO regulations regarding international patent application procedures.
Practice notes
- Carefully review all patent-related documents to determine foreign filing license requirements.
- Understand the potential implications of filing without proper authorization from the USPTO.
Official MPEP § 5.11 — License for filing in, or exporting to, a foreign
Source: USPTOLast Modified: 10/30/2024 08:50:22
5.11 License for filing in, or exporting to, a foreign country an application on an invention made in the United States or technical data relating thereto.
- (a) A license from the Commissioner for Patents under
35 U.S.C. 184
is
required before filing any application for patent, including any
modifications, amendments, or supplements thereto or divisions
thereof, or for the registration of a utility model, industrial
design, or model, in a foreign country or in a foreign or
international intellectual property authority (other than the United
States Patent and Trademark Office acting as a Receiving Office for
international applications (
35 U.S.C. 361
,
37 CFR 1.412
) or as an office of indirect
filing for international design applications (
35 U.S.C.
382
,
37 CFR
1.1002
)), if the invention was made in the
United States, and:
- (1) An application on the invention has been filed in the United States less than six months prior to the date on which the application is to be filed; or
- (2) No application on the invention has been filed in the United States.
- (b) The license from the Commissioner for Patents
referred to in paragraph (a) of this section would also authorize the
export of technical data abroad for purposes related to:
- (1) The preparation, filing or possible filing, and prosecution of a foreign application; and
- (2) The use of a World Intellectual Property Organization online service for preparing an international application for filing with the United States Patent and Trademark Office acting as a Receiving Office ( 35 U.S.C. 361 , 37 CFR 1.412 ) without separately complying with the regulations contained in 22 CFR parts 120 through 130 (International Traffic in Arms Regulations of the Department of State), 15 CFR parts 730 through 774 (Export Administration Regulations of the Bureau of Industry and Security, Department of Commerce), and 10 CFR part 810 (Assistance to Foreign Atomic Energy Activities Regulations of the Department of Energy).
- (c) Where technical data in the form of a patent application, or in any form, are being exported for purposes related to the preparation, filing or possible filing and prosecution of a foreign application, without the license from the Commissioner for Patents referred to in paragraphs (a) or (b) of this section, or on an invention not made in the United States, the export regulations contained in 22 CFR parts 120 through 130 (International Traffic in Arms Regulations of the Department of State), 15 CFR parts 730 through 774 (Export Administration Regulations of the Bureau of Industry and Security, Department of Commerce), and 10 CFR part 810 (Assistance to Foreign Atomic Energy Activities Regulations of the Department of Energy) must be complied with unless a license is not required because a United States application was on file at the time of export for at least six months without a secrecy order under § 5.2 being placed thereon. The term “exported” means export as it is defined in 22 CFR part 120, 15 CFR part 734, and activities covered by 10 CFR part 810.
- (d) If a secrecy order has been issued under § 5.2 , an application cannot be exported to, or filed in, a foreign country (including an international agency in a foreign country), except in accordance with § 5.5 .
- (e) No license pursuant to paragraph (a) of this section
is required:
- (1) If the invention was not made in the United States, or
- (2) If the corresponding United States application is not subject to a secrecy order under § 5.2 , and was filed at least six months prior to the date on which the application is filed in a foreign country, or
- (3) For subsequent modifications, amendments, and
supplements containing additional subject matter to, or
divisions of, a foreign application if:
- (i) A license is not, or was not, required under paragraph (e)(2) of this section for the foreign application;
- (ii) The corresponding United States application was not required to be made available for inspection under 35 U.S.C. 181 ; and
- (iii) Such modifications, amendments, and supplements do not, or did not, change the general nature of the invention in a manner which would require any corresponding United States application to be or have been available for inspection under 35 U.S.C. 181 .
- (f) A license pursuant to paragraph (a) of this section can be revoked at any time upon written notification by the United States Patent and Trademark Office. An authorization to file a foreign application resulting from the passage of six months from the date of filing of a United States patent application may be revoked by the imposition of a secrecy order.
[49 FR 13461, Apr. 4, 1984; paras. (a) and (e), 56 FR 1924, Jan. 18, 1991, effective Feb. 19, 1991; paras. (b), (c), and (e)(3) revised, 62 FR 53132, Oct. 10, 1997, effective Dec. 1, 1997; paras. (a)-(c) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; paras. (b) and (c) revised, 70 FR 56119, Sept. 26, 2005, effective Nov. 25, 2005; paras. (a) through (c), (e)(3)(i) and (f) revised, 80 FR 17918, Apr. 2, 2015, effective May 13, 2015; paras. (a), (b), and (e)(3) introductory text revised, 85 FR 61604, Sept. 30, 2020, effective Sept. 30, 2020]
- Access Records
- Copies And Certificates
- Foreign Filing License
-
- International Design
- Ida Filing
- Ida Requirements
- Ida Contents
- Pct
- Pct Amendments Article 19
- Pct Filing
-
| MPEP Section | Rules |
|---|---|
| MPEP § 140 | |
| MPEP § 1805 | |
| MPEP § 1828.01 | |
| MPEP § 1832 |