Patent Law FAQ
This FAQ answers all your questions about patent law, patent procedure, and the patent examination process.
Here’s the complete FAQ:
MPEP 140-Foreign Filing Licenses (20)
The scope of a foreign filing license can vary depending on how it was obtained:
- Licenses granted through the filing of a US application (implicit petition) typically have a broad scope as defined in 37 CFR 5.15(a).
- Licenses granted through explicit petitions may have a narrower scope as defined in 37 CFR 5.15(b).
- Licensees with a narrow scope can petition to convert to a broader scope under 37 CFR 5.15(c).
As stated in the MPEP: “The scope of any license granted on these petitions is indicated on the license. Petitions under 37 CFR 5.14(a) or (b) as well as any license granted on the petition are made of record in the application file.”
For more information on foreign filing license, visit: foreign filing license.
For more information on USPTO, visit: USPTO.
While both foreign filing licenses and secrecy orders are related to the protection of sensitive information in patent applications, they serve different purposes:
- Foreign Filing License: As described in MPEP 140, this is a permission granted by the USPTO to file a patent application in a foreign country. It’s typically granted routinely unless there are security concerns.
- Secrecy Order: This is an order issued under the Invention Secrecy Act (35 U.S.C. 181) to prevent disclosure of an invention that might be detrimental to national security. It prohibits both foreign filing and public disclosure of the invention.
A foreign filing license allows foreign filing, while a secrecy order prohibits it. An application under a secrecy order will not be granted a foreign filing license.
For more information on foreign filing license, visit: foreign filing license.
A retroactive foreign filing license is a license granted after an unlicensed foreign filing has already occurred. Key points include:
- It can be requested through a petition under 37 CFR 5.25.
- The unlicensed filing must have occurred through error.
- Specific requirements in 37 CFR 5.25 must be met, including providing detailed information about each unlicensed filing.
- A verified statement (oath or declaration) explaining the error is required.
The MPEP states: “A petition for a retroactive filing license may be filed under 37 CFR 5.25 if an unlicensed foreign filing has occurred through error. However, the requirements of 37 CFR 5.25 must be fulfilled in order for such a petition to be granted.”
For more information on foreign filing license, visit: foreign filing license.
For more information on USPTO, visit: USPTO.
A foreign filing license is permission granted by the USPTO to file a patent application in a foreign country. It is required when:
- An invention was made in the United States, and
- A US application has been filed less than 6 months ago, or
- No US application has been filed yet
As stated in 37 CFR 5.11(a): “A license from the Commissioner for Patents under 35 U.S.C. 184 is required before filing any application for patent… in a foreign country… if the invention was made in the United States.”
For more information on foreign filing license, visit: foreign filing license.
For more information on USPTO, visit: USPTO.
Filing a foreign patent application without the required foreign filing license can have serious consequences. According to MPEP 140:
‘Inadvertent foreign filing without a license is not uncommon. The patent law provides for petition for retroactive license in such cases.’
However, it’s important to note that:
- The application may be considered abandoned in the U.S.
- You may lose the right to obtain a U.S. patent on that invention.
- There could be criminal penalties under 35 U.S.C. 181 and 35 U.S.C. 186.
If you’ve inadvertently filed without a license, you should immediately seek a retroactive foreign filing license from the USPTO.
For more information on foreign filing license, visit: foreign filing license.
Filing a foreign application without obtaining the required foreign filing license can have serious consequences. According to MPEP 140:
‘If a license is not obtained prior to filing, there is still the possibility of obtaining a license retroactively. … However, a party who files a patent application in a foreign country or under a multinational agreement, without first obtaining a license from the Commissioner when required, shall be barred from receiving a United States patent for the invention under 35 U.S.C. 185.’
In other words, failing to obtain a license can result in being barred from receiving a U.S. patent for the same invention. However, you may be able to obtain a retroactive license in some cases.
For more information on foreign filing license, visit: foreign filing license.
Filing a foreign patent application without the required license can have severe consequences, including:
- Abandonment of the invention (35 U.S.C. 182)
- Inability to obtain a US patent (35 U.S.C. 185)
- Fines and imprisonment (35 U.S.C. 186)
As stated in 35 U.S.C. 185: “Notwithstanding any other provisions of law any person, and his successors, assigns, or legal representatives, shall not receive a United States patent for an invention if that person, or his successors, assigns, or legal representatives shall, without procuring the license prescribed in section 184, have made, or consented to or assisted another’s making, application in a foreign country for a patent or for the registration of a utility model, industrial design, or model in respect of the invention.”
For more information on foreign filing license, visit: foreign filing license.
For more information on USPTO, visit: USPTO.
The time to obtain a foreign filing license from the USPTO can vary. According to MPEP 140:
‘If a license is required but the application is not one of the types under MPEP ยง 140(II), the grant of a license is not usually included in the letter of filing receipt.’
In such cases, the processing time can take several weeks. However, for expedited processing:
- A petition for expedited handling under 37 CFR 1.182 can be filed.
- In urgent cases, the license can be granted immediately by telephone.
- The Office of Licensing and Review can grant a license the same day by fax.
It’s advisable to apply for a license well in advance of any planned foreign filing to ensure timely processing.
For more information on foreign filing license, visit: foreign filing license.
How long does a foreign filing license remain valid?
The validity period of a foreign filing license depends on the type of license issued. According to MPEP 140:
“A foreign filing license is not required to file a patent application in another country if the invention was not made in the United States. A license is required if the invention was made in this country and:
- 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 abroad, or
- No application on the invention has been filed in the United States.”
In essence, a foreign filing license granted as part of the regular patent application process remains valid for six months from the filing date. After six months, no additional license is required. However, if you obtain a petition-based license (e.g., for inventions not yet filed in the U.S.), the license will specify its scope and duration in the grant letter.
For more information on foreign filing license, visit: foreign filing license.
The 6-month rule for foreign filing licenses states that:
- After 6 months from the filing date of a US application, a foreign filing license is no longer required for that subject matter.
- This automatic license occurs unless a Secrecy Order has been imposed on the application.
- The rule is based on 35 U.S.C. 184 and 37 CFR 5.11(e)(2).
As stated in the MPEP: “There are two ways in which permission to file an application abroad may be obtained: either a petition for a foreign filing license may be granted (37 CFR 5.12) or an applicant may wait 6 months after filing an application in the USPTO (35 U.S.C. 184) at which time a license on that subject matter is no longer required as long as no Secrecy Order has been imposed.”
For more information on foreign filing license, visit: foreign filing license.
For more information on USPTO, visit: USPTO.
A petition for a retroactive foreign filing license may be filed under 37 CFR 5.25 if an unlicensed foreign filing occurred through error. The petition must include:
1) A listing of each foreign country where the unlicensed patent application was filed
2) The filing dates in each country
3) A verified statement containing:
– An averment that the subject matter was not under a secrecy order and is not currently under a secrecy order
– A showing that the license has been diligently sought after discovery of the proscribed foreign filing
– An explanation of why the material was filed abroad through error without the required license
4) The required fee under 37 CFR 1.17(g)
Secrecy Orders have significant impacts on foreign filing licenses:
- A Secrecy Order prevents the granting of a foreign filing license.
- It overrides the 6-month rule, prohibiting foreign filing even after 6 months.
- Applications under a Secrecy Order cannot be exported or filed in foreign countries.
- Violating a Secrecy Order can result in abandonment of the invention and other penalties.
The MPEP states: “Only the imposition of a Secrecy Order will cause revocation of the authority which arises from 35 U.S.C. 184 to file a foreign application 6 months or later after the date of filing of a corresponding U.S. patent application.”
For more information on Secrecy Orders, refer to MPEP 120.
For more information on foreign filing license, visit: foreign filing license.
For more information on USPTO, visit: USPTO.
If you’ve inadvertently filed a foreign patent application without obtaining a foreign filing license, you can apply for a retroactive license. According to MPEP 140:
‘Petitions for a retroactive license under 35 U.S.C. 184 are decided by the Office of Petitions. The petition must be in the form of a verified statement and should include the following information:’
- A listing of each of the foreign countries in which the unlicensed patent application material was filed
- The dates on which the material was filed in each country
- A verified statement that the subject matter in question was not under a secrecy order at the time it was filed abroad
- A verified statement that the license has been diligently sought after discovery of the proscribed foreign filing
- An explanation of why the material was filed abroad through error without the required license first having been obtained
The petition should be submitted to the USPTO as soon as possible after discovering the error. Include all relevant documentation and be prepared to pay any required fees.
For more information on retroactive foreign filing license, visit: retroactive foreign filing license.
For more information on USPTO, visit: USPTO.
There are several ways to obtain a foreign filing license:
- File a US patent application, which is considered an implicit petition for a license. The filing receipt will indicate if a license is granted.
- File an explicit petition for a license under 37 CFR 5.12(b) if no US application has been filed.
- Wait 6 months after filing a US application, at which point a license is no longer required (unless a Secrecy Order has been imposed).
As stated in the MPEP: “There are two ways in which permission to file an application abroad may be obtained: either a petition for a foreign filing license may be granted (37 CFR 5.12) or an applicant may wait 6 months after filing an application in the USPTO (35 U.S.C. 184) at which time a license on that subject matter is no longer required as long as no Secrecy Order has been imposed.”
For more information on foreign filing license, visit: foreign filing license.
For more information on patent procedure, visit: patent procedure.
For more information on USPTO, visit: USPTO.
Can I obtain a foreign filing license for an invention not yet filed with the USPTO?
Yes, it is possible to obtain a foreign filing license for an invention that has not yet been filed with the United States Patent and Trademark Office (USPTO). This is known as a petition-based license. According to MPEP 140:
“If no corresponding national or international application has been filed in the United States, the petition for license should be accompanied by a legible copy of the material upon which a foreign patent application is to be based. Where the material upon which the foreign patent application is to be based is a U.S. application, the petition for license should identify the application by its application number, filing date, inventor, and title. Where the material upon which the foreign patent application is to be based is not a U.S. application, a legible copy of the material must be attached to the petition.”
To obtain such a license, you must file a petition with the USPTO, providing details about the invention and the reasons for seeking an early foreign filing license. The USPTO will review the petition and may grant the license if it determines that the invention does not pose a national security risk.
For more information on foreign filing license, visit: foreign filing license.
Yes, you can obtain a foreign filing license for a provisional patent application. According to MPEP 140:
‘U.S. provisional applications are considered as pending applications and are subject to the license requirement specified in 35 U.S.C. 184.’
This means that:
- Provisional applications require a foreign filing license just like non-provisional applications.
- The process for obtaining a license is the same as for non-provisional applications.
- If you plan to file a foreign application based on your provisional application within 6 months, you should request a license when filing the provisional or shortly thereafter.
Remember, the license requirement applies to the subject matter, not the type of application.
For more information on foreign filing license, visit: foreign filing license.
For more information on provisional application, visit: provisional application.
Yes, a foreign filing license can be revoked by the USPTO. Key points about revocation include:
- The USPTO can revoke a license through written notification.
- Revocation usually occurs if additional review reveals national security concerns.
- Revocation is effective on the date the notice is mailed.
- Foreign filings made before revocation are generally not affected.
- New foreign filings after revocation are not permitted without a new license.
The MPEP states: “Upon written notification from the USPTO, any foreign filing license required by 37 CFR 5.11(a) may be revoked. Ordinarily, revocation indicates that additional review of the licensed subject matter revealed the need for referral of the application to the appropriate defense agencies.”
For more information on foreign filing license, visit: foreign filing license.
For more information on USPTO, visit: USPTO.
Can a foreign filing license be revoked or modified?
Yes, a foreign filing license can be revoked or modified under certain circumstances. The MPEP 140 provides guidance on this:
Licenses for foreign filing may be revoked or modified upon written notification from the Director. Normally, revocation or modification will only affect applications or other materials not already filed abroad.
Key points about revocation or modification of foreign filing licenses:
- The Director of the USPTO has the authority to revoke or modify licenses.
- Notification of revocation or modification will be provided in writing.
- Generally, the revocation or modification only affects future filings, not those already made abroad.
- In cases of imminent national emergency, revocation may be immediate and may affect filings already made abroad.
If your license is revoked or modified, you should immediately cease any foreign filing activities covered by the license and seek legal counsel to understand the implications and next steps.
For more information on foreign filing license, visit: foreign filing license.
For more information on revocation, visit: revocation.
Yes, a foreign filing license can be denied by the USPTO. According to MPEP 140:
‘If the Director of the USPTO or his or her designee determines that the application contains subject matter that requires a security review under the Invention Secrecy Act (35 U.S.C. 181-188), the petition for license is denied and the applicant is notified in writing.’
Reasons for denial may include:
- National security concerns
- Subject matter falling under the Invention Secrecy Act
- Incomplete or incorrect application for the license
If a license is denied, the applicant will be notified in writing and may have the opportunity to address the issues or appeal the decision.
For more information on foreign filing license, visit: foreign filing license.
Yes, there are certain exceptions to the foreign filing license requirement. According to MPEP 140:
‘A license is not required if the invention was not made in the United States. Also, a license is not required to file an international application in the United States Receiving Office.’
Additionally, the following situations do not require a foreign filing license:
- Filing applications in countries where no security agreement exists with the United States
- Filing a PCT application designating only foreign countries
- Filing a design patent application in a foreign country
However, it’s important to note that these exceptions are subject to specific conditions and may change. Always consult with a patent attorney or the USPTO if you’re unsure about your specific situation.
For more information on USPTO, visit: USPTO.
Patent Law (20)
The scope of a foreign filing license can vary depending on how it was obtained:
- Licenses granted through the filing of a US application (implicit petition) typically have a broad scope as defined in 37 CFR 5.15(a).
- Licenses granted through explicit petitions may have a narrower scope as defined in 37 CFR 5.15(b).
- Licensees with a narrow scope can petition to convert to a broader scope under 37 CFR 5.15(c).
As stated in the MPEP: “The scope of any license granted on these petitions is indicated on the license. Petitions under 37 CFR 5.14(a) or (b) as well as any license granted on the petition are made of record in the application file.”
For more information on foreign filing license, visit: foreign filing license.
For more information on USPTO, visit: USPTO.
While both foreign filing licenses and secrecy orders are related to the protection of sensitive information in patent applications, they serve different purposes:
- Foreign Filing License: As described in MPEP 140, this is a permission granted by the USPTO to file a patent application in a foreign country. It’s typically granted routinely unless there are security concerns.
- Secrecy Order: This is an order issued under the Invention Secrecy Act (35 U.S.C. 181) to prevent disclosure of an invention that might be detrimental to national security. It prohibits both foreign filing and public disclosure of the invention.
A foreign filing license allows foreign filing, while a secrecy order prohibits it. An application under a secrecy order will not be granted a foreign filing license.
For more information on foreign filing license, visit: foreign filing license.
A retroactive foreign filing license is a license granted after an unlicensed foreign filing has already occurred. Key points include:
- It can be requested through a petition under 37 CFR 5.25.
- The unlicensed filing must have occurred through error.
- Specific requirements in 37 CFR 5.25 must be met, including providing detailed information about each unlicensed filing.
- A verified statement (oath or declaration) explaining the error is required.
The MPEP states: “A petition for a retroactive filing license may be filed under 37 CFR 5.25 if an unlicensed foreign filing has occurred through error. However, the requirements of 37 CFR 5.25 must be fulfilled in order for such a petition to be granted.”
For more information on foreign filing license, visit: foreign filing license.
For more information on USPTO, visit: USPTO.
A foreign filing license is permission granted by the USPTO to file a patent application in a foreign country. It is required when:
- An invention was made in the United States, and
- A US application has been filed less than 6 months ago, or
- No US application has been filed yet
As stated in 37 CFR 5.11(a): “A license from the Commissioner for Patents under 35 U.S.C. 184 is required before filing any application for patent… in a foreign country… if the invention was made in the United States.”
For more information on foreign filing license, visit: foreign filing license.
For more information on USPTO, visit: USPTO.
Filing a foreign patent application without the required foreign filing license can have serious consequences. According to MPEP 140:
‘Inadvertent foreign filing without a license is not uncommon. The patent law provides for petition for retroactive license in such cases.’
However, it’s important to note that:
- The application may be considered abandoned in the U.S.
- You may lose the right to obtain a U.S. patent on that invention.
- There could be criminal penalties under 35 U.S.C. 181 and 35 U.S.C. 186.
If you’ve inadvertently filed without a license, you should immediately seek a retroactive foreign filing license from the USPTO.
For more information on foreign filing license, visit: foreign filing license.
Filing a foreign application without obtaining the required foreign filing license can have serious consequences. According to MPEP 140:
‘If a license is not obtained prior to filing, there is still the possibility of obtaining a license retroactively. … However, a party who files a patent application in a foreign country or under a multinational agreement, without first obtaining a license from the Commissioner when required, shall be barred from receiving a United States patent for the invention under 35 U.S.C. 185.’
In other words, failing to obtain a license can result in being barred from receiving a U.S. patent for the same invention. However, you may be able to obtain a retroactive license in some cases.
For more information on foreign filing license, visit: foreign filing license.
Filing a foreign patent application without the required license can have severe consequences, including:
- Abandonment of the invention (35 U.S.C. 182)
- Inability to obtain a US patent (35 U.S.C. 185)
- Fines and imprisonment (35 U.S.C. 186)
As stated in 35 U.S.C. 185: “Notwithstanding any other provisions of law any person, and his successors, assigns, or legal representatives, shall not receive a United States patent for an invention if that person, or his successors, assigns, or legal representatives shall, without procuring the license prescribed in section 184, have made, or consented to or assisted another’s making, application in a foreign country for a patent or for the registration of a utility model, industrial design, or model in respect of the invention.”
For more information on foreign filing license, visit: foreign filing license.
For more information on USPTO, visit: USPTO.
The time to obtain a foreign filing license from the USPTO can vary. According to MPEP 140:
‘If a license is required but the application is not one of the types under MPEP ยง 140(II), the grant of a license is not usually included in the letter of filing receipt.’
In such cases, the processing time can take several weeks. However, for expedited processing:
- A petition for expedited handling under 37 CFR 1.182 can be filed.
- In urgent cases, the license can be granted immediately by telephone.
- The Office of Licensing and Review can grant a license the same day by fax.
It’s advisable to apply for a license well in advance of any planned foreign filing to ensure timely processing.
For more information on foreign filing license, visit: foreign filing license.
How long does a foreign filing license remain valid?
The validity period of a foreign filing license depends on the type of license issued. According to MPEP 140:
“A foreign filing license is not required to file a patent application in another country if the invention was not made in the United States. A license is required if the invention was made in this country and:
- 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 abroad, or
- No application on the invention has been filed in the United States.”
In essence, a foreign filing license granted as part of the regular patent application process remains valid for six months from the filing date. After six months, no additional license is required. However, if you obtain a petition-based license (e.g., for inventions not yet filed in the U.S.), the license will specify its scope and duration in the grant letter.
For more information on foreign filing license, visit: foreign filing license.
The 6-month rule for foreign filing licenses states that:
- After 6 months from the filing date of a US application, a foreign filing license is no longer required for that subject matter.
- This automatic license occurs unless a Secrecy Order has been imposed on the application.
- The rule is based on 35 U.S.C. 184 and 37 CFR 5.11(e)(2).
As stated in the MPEP: “There are two ways in which permission to file an application abroad may be obtained: either a petition for a foreign filing license may be granted (37 CFR 5.12) or an applicant may wait 6 months after filing an application in the USPTO (35 U.S.C. 184) at which time a license on that subject matter is no longer required as long as no Secrecy Order has been imposed.”
For more information on foreign filing license, visit: foreign filing license.
For more information on USPTO, visit: USPTO.
A petition for a retroactive foreign filing license may be filed under 37 CFR 5.25 if an unlicensed foreign filing occurred through error. The petition must include:
1) A listing of each foreign country where the unlicensed patent application was filed
2) The filing dates in each country
3) A verified statement containing:
– An averment that the subject matter was not under a secrecy order and is not currently under a secrecy order
– A showing that the license has been diligently sought after discovery of the proscribed foreign filing
– An explanation of why the material was filed abroad through error without the required license
4) The required fee under 37 CFR 1.17(g)
Secrecy Orders have significant impacts on foreign filing licenses:
- A Secrecy Order prevents the granting of a foreign filing license.
- It overrides the 6-month rule, prohibiting foreign filing even after 6 months.
- Applications under a Secrecy Order cannot be exported or filed in foreign countries.
- Violating a Secrecy Order can result in abandonment of the invention and other penalties.
The MPEP states: “Only the imposition of a Secrecy Order will cause revocation of the authority which arises from 35 U.S.C. 184 to file a foreign application 6 months or later after the date of filing of a corresponding U.S. patent application.”
For more information on Secrecy Orders, refer to MPEP 120.
For more information on foreign filing license, visit: foreign filing license.
For more information on USPTO, visit: USPTO.
If you’ve inadvertently filed a foreign patent application without obtaining a foreign filing license, you can apply for a retroactive license. According to MPEP 140:
‘Petitions for a retroactive license under 35 U.S.C. 184 are decided by the Office of Petitions. The petition must be in the form of a verified statement and should include the following information:’
- A listing of each of the foreign countries in which the unlicensed patent application material was filed
- The dates on which the material was filed in each country
- A verified statement that the subject matter in question was not under a secrecy order at the time it was filed abroad
- A verified statement that the license has been diligently sought after discovery of the proscribed foreign filing
- An explanation of why the material was filed abroad through error without the required license first having been obtained
The petition should be submitted to the USPTO as soon as possible after discovering the error. Include all relevant documentation and be prepared to pay any required fees.
For more information on retroactive foreign filing license, visit: retroactive foreign filing license.
For more information on USPTO, visit: USPTO.
There are several ways to obtain a foreign filing license:
- File a US patent application, which is considered an implicit petition for a license. The filing receipt will indicate if a license is granted.
- File an explicit petition for a license under 37 CFR 5.12(b) if no US application has been filed.
- Wait 6 months after filing a US application, at which point a license is no longer required (unless a Secrecy Order has been imposed).
As stated in the MPEP: “There are two ways in which permission to file an application abroad may be obtained: either a petition for a foreign filing license may be granted (37 CFR 5.12) or an applicant may wait 6 months after filing an application in the USPTO (35 U.S.C. 184) at which time a license on that subject matter is no longer required as long as no Secrecy Order has been imposed.”
For more information on foreign filing license, visit: foreign filing license.
For more information on patent procedure, visit: patent procedure.
For more information on USPTO, visit: USPTO.
Can I obtain a foreign filing license for an invention not yet filed with the USPTO?
Yes, it is possible to obtain a foreign filing license for an invention that has not yet been filed with the United States Patent and Trademark Office (USPTO). This is known as a petition-based license. According to MPEP 140:
“If no corresponding national or international application has been filed in the United States, the petition for license should be accompanied by a legible copy of the material upon which a foreign patent application is to be based. Where the material upon which the foreign patent application is to be based is a U.S. application, the petition for license should identify the application by its application number, filing date, inventor, and title. Where the material upon which the foreign patent application is to be based is not a U.S. application, a legible copy of the material must be attached to the petition.”
To obtain such a license, you must file a petition with the USPTO, providing details about the invention and the reasons for seeking an early foreign filing license. The USPTO will review the petition and may grant the license if it determines that the invention does not pose a national security risk.
For more information on foreign filing license, visit: foreign filing license.
Yes, you can obtain a foreign filing license for a provisional patent application. According to MPEP 140:
‘U.S. provisional applications are considered as pending applications and are subject to the license requirement specified in 35 U.S.C. 184.’
This means that:
- Provisional applications require a foreign filing license just like non-provisional applications.
- The process for obtaining a license is the same as for non-provisional applications.
- If you plan to file a foreign application based on your provisional application within 6 months, you should request a license when filing the provisional or shortly thereafter.
Remember, the license requirement applies to the subject matter, not the type of application.
For more information on foreign filing license, visit: foreign filing license.
For more information on provisional application, visit: provisional application.
Yes, a foreign filing license can be revoked by the USPTO. Key points about revocation include:
- The USPTO can revoke a license through written notification.
- Revocation usually occurs if additional review reveals national security concerns.
- Revocation is effective on the date the notice is mailed.
- Foreign filings made before revocation are generally not affected.
- New foreign filings after revocation are not permitted without a new license.
The MPEP states: “Upon written notification from the USPTO, any foreign filing license required by 37 CFR 5.11(a) may be revoked. Ordinarily, revocation indicates that additional review of the licensed subject matter revealed the need for referral of the application to the appropriate defense agencies.”
For more information on foreign filing license, visit: foreign filing license.
For more information on USPTO, visit: USPTO.
Can a foreign filing license be revoked or modified?
Yes, a foreign filing license can be revoked or modified under certain circumstances. The MPEP 140 provides guidance on this:
Licenses for foreign filing may be revoked or modified upon written notification from the Director. Normally, revocation or modification will only affect applications or other materials not already filed abroad.
Key points about revocation or modification of foreign filing licenses:
- The Director of the USPTO has the authority to revoke or modify licenses.
- Notification of revocation or modification will be provided in writing.
- Generally, the revocation or modification only affects future filings, not those already made abroad.
- In cases of imminent national emergency, revocation may be immediate and may affect filings already made abroad.
If your license is revoked or modified, you should immediately cease any foreign filing activities covered by the license and seek legal counsel to understand the implications and next steps.
For more information on foreign filing license, visit: foreign filing license.
For more information on revocation, visit: revocation.
Yes, a foreign filing license can be denied by the USPTO. According to MPEP 140:
‘If the Director of the USPTO or his or her designee determines that the application contains subject matter that requires a security review under the Invention Secrecy Act (35 U.S.C. 181-188), the petition for license is denied and the applicant is notified in writing.’
Reasons for denial may include:
- National security concerns
- Subject matter falling under the Invention Secrecy Act
- Incomplete or incorrect application for the license
If a license is denied, the applicant will be notified in writing and may have the opportunity to address the issues or appeal the decision.
For more information on foreign filing license, visit: foreign filing license.
Yes, there are certain exceptions to the foreign filing license requirement. According to MPEP 140:
‘A license is not required if the invention was not made in the United States. Also, a license is not required to file an international application in the United States Receiving Office.’
Additionally, the following situations do not require a foreign filing license:
- Filing applications in countries where no security agreement exists with the United States
- Filing a PCT application designating only foreign countries
- Filing a design patent application in a foreign country
However, it’s important to note that these exceptions are subject to specific conditions and may change. Always consult with a patent attorney or the USPTO if you’re unsure about your specific situation.
For more information on USPTO, visit: USPTO.
Patent Procedure (19)
The scope of a foreign filing license can vary depending on how it was obtained:
- Licenses granted through the filing of a US application (implicit petition) typically have a broad scope as defined in 37 CFR 5.15(a).
- Licenses granted through explicit petitions may have a narrower scope as defined in 37 CFR 5.15(b).
- Licensees with a narrow scope can petition to convert to a broader scope under 37 CFR 5.15(c).
As stated in the MPEP: “The scope of any license granted on these petitions is indicated on the license. Petitions under 37 CFR 5.14(a) or (b) as well as any license granted on the petition are made of record in the application file.”
For more information on foreign filing license, visit: foreign filing license.
For more information on USPTO, visit: USPTO.
While both foreign filing licenses and secrecy orders are related to the protection of sensitive information in patent applications, they serve different purposes:
- Foreign Filing License: As described in MPEP 140, this is a permission granted by the USPTO to file a patent application in a foreign country. It’s typically granted routinely unless there are security concerns.
- Secrecy Order: This is an order issued under the Invention Secrecy Act (35 U.S.C. 181) to prevent disclosure of an invention that might be detrimental to national security. It prohibits both foreign filing and public disclosure of the invention.
A foreign filing license allows foreign filing, while a secrecy order prohibits it. An application under a secrecy order will not be granted a foreign filing license.
For more information on foreign filing license, visit: foreign filing license.
A retroactive foreign filing license is a license granted after an unlicensed foreign filing has already occurred. Key points include:
- It can be requested through a petition under 37 CFR 5.25.
- The unlicensed filing must have occurred through error.
- Specific requirements in 37 CFR 5.25 must be met, including providing detailed information about each unlicensed filing.
- A verified statement (oath or declaration) explaining the error is required.
The MPEP states: “A petition for a retroactive filing license may be filed under 37 CFR 5.25 if an unlicensed foreign filing has occurred through error. However, the requirements of 37 CFR 5.25 must be fulfilled in order for such a petition to be granted.”
For more information on foreign filing license, visit: foreign filing license.
For more information on USPTO, visit: USPTO.
A foreign filing license is permission granted by the USPTO to file a patent application in a foreign country. It is required when:
- An invention was made in the United States, and
- A US application has been filed less than 6 months ago, or
- No US application has been filed yet
As stated in 37 CFR 5.11(a): “A license from the Commissioner for Patents under 35 U.S.C. 184 is required before filing any application for patent… in a foreign country… if the invention was made in the United States.”
For more information on foreign filing license, visit: foreign filing license.
For more information on USPTO, visit: USPTO.
Filing a foreign patent application without the required foreign filing license can have serious consequences. According to MPEP 140:
‘Inadvertent foreign filing without a license is not uncommon. The patent law provides for petition for retroactive license in such cases.’
However, it’s important to note that:
- The application may be considered abandoned in the U.S.
- You may lose the right to obtain a U.S. patent on that invention.
- There could be criminal penalties under 35 U.S.C. 181 and 35 U.S.C. 186.
If you’ve inadvertently filed without a license, you should immediately seek a retroactive foreign filing license from the USPTO.
For more information on foreign filing license, visit: foreign filing license.
Filing a foreign application without obtaining the required foreign filing license can have serious consequences. According to MPEP 140:
‘If a license is not obtained prior to filing, there is still the possibility of obtaining a license retroactively. … However, a party who files a patent application in a foreign country or under a multinational agreement, without first obtaining a license from the Commissioner when required, shall be barred from receiving a United States patent for the invention under 35 U.S.C. 185.’
In other words, failing to obtain a license can result in being barred from receiving a U.S. patent for the same invention. However, you may be able to obtain a retroactive license in some cases.
For more information on foreign filing license, visit: foreign filing license.
Filing a foreign patent application without the required license can have severe consequences, including:
- Abandonment of the invention (35 U.S.C. 182)
- Inability to obtain a US patent (35 U.S.C. 185)
- Fines and imprisonment (35 U.S.C. 186)
As stated in 35 U.S.C. 185: “Notwithstanding any other provisions of law any person, and his successors, assigns, or legal representatives, shall not receive a United States patent for an invention if that person, or his successors, assigns, or legal representatives shall, without procuring the license prescribed in section 184, have made, or consented to or assisted another’s making, application in a foreign country for a patent or for the registration of a utility model, industrial design, or model in respect of the invention.”
For more information on foreign filing license, visit: foreign filing license.
For more information on USPTO, visit: USPTO.
The time to obtain a foreign filing license from the USPTO can vary. According to MPEP 140:
‘If a license is required but the application is not one of the types under MPEP ยง 140(II), the grant of a license is not usually included in the letter of filing receipt.’
In such cases, the processing time can take several weeks. However, for expedited processing:
- A petition for expedited handling under 37 CFR 1.182 can be filed.
- In urgent cases, the license can be granted immediately by telephone.
- The Office of Licensing and Review can grant a license the same day by fax.
It’s advisable to apply for a license well in advance of any planned foreign filing to ensure timely processing.
For more information on foreign filing license, visit: foreign filing license.
How long does a foreign filing license remain valid?
The validity period of a foreign filing license depends on the type of license issued. According to MPEP 140:
“A foreign filing license is not required to file a patent application in another country if the invention was not made in the United States. A license is required if the invention was made in this country and:
- 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 abroad, or
- No application on the invention has been filed in the United States.”
In essence, a foreign filing license granted as part of the regular patent application process remains valid for six months from the filing date. After six months, no additional license is required. However, if you obtain a petition-based license (e.g., for inventions not yet filed in the U.S.), the license will specify its scope and duration in the grant letter.
For more information on foreign filing license, visit: foreign filing license.
The 6-month rule for foreign filing licenses states that:
- After 6 months from the filing date of a US application, a foreign filing license is no longer required for that subject matter.
- This automatic license occurs unless a Secrecy Order has been imposed on the application.
- The rule is based on 35 U.S.C. 184 and 37 CFR 5.11(e)(2).
As stated in the MPEP: “There are two ways in which permission to file an application abroad may be obtained: either a petition for a foreign filing license may be granted (37 CFR 5.12) or an applicant may wait 6 months after filing an application in the USPTO (35 U.S.C. 184) at which time a license on that subject matter is no longer required as long as no Secrecy Order has been imposed.”
For more information on foreign filing license, visit: foreign filing license.
For more information on USPTO, visit: USPTO.
Secrecy Orders have significant impacts on foreign filing licenses:
- A Secrecy Order prevents the granting of a foreign filing license.
- It overrides the 6-month rule, prohibiting foreign filing even after 6 months.
- Applications under a Secrecy Order cannot be exported or filed in foreign countries.
- Violating a Secrecy Order can result in abandonment of the invention and other penalties.
The MPEP states: “Only the imposition of a Secrecy Order will cause revocation of the authority which arises from 35 U.S.C. 184 to file a foreign application 6 months or later after the date of filing of a corresponding U.S. patent application.”
For more information on Secrecy Orders, refer to MPEP 120.
For more information on foreign filing license, visit: foreign filing license.
For more information on USPTO, visit: USPTO.
If you’ve inadvertently filed a foreign patent application without obtaining a foreign filing license, you can apply for a retroactive license. According to MPEP 140:
‘Petitions for a retroactive license under 35 U.S.C. 184 are decided by the Office of Petitions. The petition must be in the form of a verified statement and should include the following information:’
- A listing of each of the foreign countries in which the unlicensed patent application material was filed
- The dates on which the material was filed in each country
- A verified statement that the subject matter in question was not under a secrecy order at the time it was filed abroad
- A verified statement that the license has been diligently sought after discovery of the proscribed foreign filing
- An explanation of why the material was filed abroad through error without the required license first having been obtained
The petition should be submitted to the USPTO as soon as possible after discovering the error. Include all relevant documentation and be prepared to pay any required fees.
For more information on retroactive foreign filing license, visit: retroactive foreign filing license.
For more information on USPTO, visit: USPTO.
There are several ways to obtain a foreign filing license:
- File a US patent application, which is considered an implicit petition for a license. The filing receipt will indicate if a license is granted.
- File an explicit petition for a license under 37 CFR 5.12(b) if no US application has been filed.
- Wait 6 months after filing a US application, at which point a license is no longer required (unless a Secrecy Order has been imposed).
As stated in the MPEP: “There are two ways in which permission to file an application abroad may be obtained: either a petition for a foreign filing license may be granted (37 CFR 5.12) or an applicant may wait 6 months after filing an application in the USPTO (35 U.S.C. 184) at which time a license on that subject matter is no longer required as long as no Secrecy Order has been imposed.”
For more information on foreign filing license, visit: foreign filing license.
For more information on patent procedure, visit: patent procedure.
For more information on USPTO, visit: USPTO.
Can I obtain a foreign filing license for an invention not yet filed with the USPTO?
Yes, it is possible to obtain a foreign filing license for an invention that has not yet been filed with the United States Patent and Trademark Office (USPTO). This is known as a petition-based license. According to MPEP 140:
“If no corresponding national or international application has been filed in the United States, the petition for license should be accompanied by a legible copy of the material upon which a foreign patent application is to be based. Where the material upon which the foreign patent application is to be based is a U.S. application, the petition for license should identify the application by its application number, filing date, inventor, and title. Where the material upon which the foreign patent application is to be based is not a U.S. application, a legible copy of the material must be attached to the petition.”
To obtain such a license, you must file a petition with the USPTO, providing details about the invention and the reasons for seeking an early foreign filing license. The USPTO will review the petition and may grant the license if it determines that the invention does not pose a national security risk.
For more information on foreign filing license, visit: foreign filing license.
Yes, you can obtain a foreign filing license for a provisional patent application. According to MPEP 140:
‘U.S. provisional applications are considered as pending applications and are subject to the license requirement specified in 35 U.S.C. 184.’
This means that:
- Provisional applications require a foreign filing license just like non-provisional applications.
- The process for obtaining a license is the same as for non-provisional applications.
- If you plan to file a foreign application based on your provisional application within 6 months, you should request a license when filing the provisional or shortly thereafter.
Remember, the license requirement applies to the subject matter, not the type of application.
For more information on foreign filing license, visit: foreign filing license.
For more information on provisional application, visit: provisional application.
Yes, a foreign filing license can be revoked by the USPTO. Key points about revocation include:
- The USPTO can revoke a license through written notification.
- Revocation usually occurs if additional review reveals national security concerns.
- Revocation is effective on the date the notice is mailed.
- Foreign filings made before revocation are generally not affected.
- New foreign filings after revocation are not permitted without a new license.
The MPEP states: “Upon written notification from the USPTO, any foreign filing license required by 37 CFR 5.11(a) may be revoked. Ordinarily, revocation indicates that additional review of the licensed subject matter revealed the need for referral of the application to the appropriate defense agencies.”
For more information on foreign filing license, visit: foreign filing license.
For more information on USPTO, visit: USPTO.
Can a foreign filing license be revoked or modified?
Yes, a foreign filing license can be revoked or modified under certain circumstances. The MPEP 140 provides guidance on this:
Licenses for foreign filing may be revoked or modified upon written notification from the Director. Normally, revocation or modification will only affect applications or other materials not already filed abroad.
Key points about revocation or modification of foreign filing licenses:
- The Director of the USPTO has the authority to revoke or modify licenses.
- Notification of revocation or modification will be provided in writing.
- Generally, the revocation or modification only affects future filings, not those already made abroad.
- In cases of imminent national emergency, revocation may be immediate and may affect filings already made abroad.
If your license is revoked or modified, you should immediately cease any foreign filing activities covered by the license and seek legal counsel to understand the implications and next steps.
For more information on foreign filing license, visit: foreign filing license.
For more information on revocation, visit: revocation.
Yes, a foreign filing license can be denied by the USPTO. According to MPEP 140:
‘If the Director of the USPTO or his or her designee determines that the application contains subject matter that requires a security review under the Invention Secrecy Act (35 U.S.C. 181-188), the petition for license is denied and the applicant is notified in writing.’
Reasons for denial may include:
- National security concerns
- Subject matter falling under the Invention Secrecy Act
- Incomplete or incorrect application for the license
If a license is denied, the applicant will be notified in writing and may have the opportunity to address the issues or appeal the decision.
For more information on foreign filing license, visit: foreign filing license.
Yes, there are certain exceptions to the foreign filing license requirement. According to MPEP 140:
‘A license is not required if the invention was not made in the United States. Also, a license is not required to file an international application in the United States Receiving Office.’
Additionally, the following situations do not require a foreign filing license:
- Filing applications in countries where no security agreement exists with the United States
- Filing a PCT application designating only foreign countries
- Filing a design patent application in a foreign country
However, it’s important to note that these exceptions are subject to specific conditions and may change. Always consult with a patent attorney or the USPTO if you’re unsure about your specific situation.
For more information on USPTO, visit: USPTO.