What happens if I file a foreign application without obtaining a 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…
Read MoreWhat happens if I file a foreign patent application without a foreign filing license?
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.…
Read MoreHow do Secrecy Orders affect foreign filing licenses?
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…
Read MoreHow does the 6-month rule work for foreign filing licenses?
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…
Read MoreCan a foreign filing license be revoked?
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…
Read MoreWhat is a retroactive 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…
Read MoreWhat is the scope of a foreign filing license?
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…
Read MoreWhat are the consequences of filing a foreign patent application without a 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…
Read MoreHow can I obtain a foreign filing license?
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…
Read MoreWhat is a foreign filing license and when is it required?
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…
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