| Amendments, Drawings, CPA Practice |
Referenced Items (325, 326, 327, 328, 329, 330, 331, 332, 333) |
(330) Department of Commerce
Patent and Trademark Office
37 CFR Part 5
Patent Law Foreign Filing Amendments
Agency: Patent and Trademark Office, Commerce
Action: Notice of Final Rulemaking
Summary: The Patent and Trademark Office (Office) is amending the
rules of practice in patent cases to implement the Patent Law Foreign
Filing Amendments Act of 1988, Subtitle B of Public Law 100-418. The
rules reflect changes made to 35 U.S.C. 184 which specify that a license
is not required to, file amendments, modifications, and supplements
containing additional subject matter to a previously licensed foreign
patent application if such amendments, modifications, and supplements do
not change the general nature of the invention disclosed in the
application in a manner which would require a corresponding United
States patent application to be made available for national security
inspection under 35 U.S.C. 181. These regulatory changes are applicable
to most existing foreign filing license holders if their patent
application did not undergo security inspection under 35 U.S.C 181.
Also, under the rules, a retroactive foreign filing license may be
granted in situations where a proscribed foreign filing occurred through
error and without deceptive intent as opposed to the earlier standard of
inadvertence.
Effective Date: Feb. 19, 1991.
Supplementary Information: A notice of proposed rulemaking was published
in the Federal Register at 55 Fed. Reg. 24270-24275 (June 15, 1990) and
at 1116 Official Gazette 21-25 (July 10, 1990). No oral hearing was
held. Three written comments on the proposed rulemaking were received.
The comments received and replies thereto are listed below.
The rules are intended to implement the Patent Law Foreign Filing
Amendments Act of 1988, Subtitle B of Public Law 100-418 (hereinafter
the Act), which amended 184, 185 and 186 of Title 35, United States
Code, in order to simplify the procedures for United States inventors
filing and prosecuting patent applications in foreign countries. The
Office has not made any rule changes to implement the amendments to 35
U.S.C. 185 or 186 since these changes affect matters outside its
jurisdiction.
Section 184 of Title 35 is intended to protect United States national
security interests by preventing the disclosure of potentially sensitive
inventions made in the United States to foreign nationals by the act of
filing a patent application in foreign countries. An inventor may not
apply for a foreign patent on an invention made in the United States
until at least six (6) months after the inventor has filed a United
States patent application unless the inventor receives a license from
the Office permitting an earlier foreign filing. This six month period
assures the Office the opportunity to screen applications for
information the disclosure of which might be detrimental to the national
security. Also, 184, as originally enacted, authorized the Office to
grant a retroactive license for an unlicensed foreign filing of a patent
application if the foreign filing was inadvertent and if the disclosure
of the subject matter in the application would not be detrimental to
United States security interests.
The original regulatory implementation of 35 U.S.C. 184 required
applicants to obtain a license not only for the original foreign patent
application but also for the filing of almost any information in support
of the application, thereby creating administrative problems for United
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States inventors seeking foreign patent protection. For example, foreign
patent offices often demand that additional technical data, such as the
melting point of a chemical, be added to a patent application. An
additional foreign filing license was usually required before the
inventor could submit modifications, amendments, or supplements to a
previously licensed foreign patent application, regardless of how
trivial the change might be.
Recognizing the problems involved in obtaining these additional
licenses, the Office promulgated rules in 1984 (see 5.15(a) and 49
Fed. Reg. 13456 (April 4, 1984)) to streamline the licensing procedure.
The 1984 rule change provided that an inventor could obtain in
applications, the disclosure of the content of which is not potentially
detrimental to United States security interests, a license which
permitted the foreign filing of modifications, amendments, and
supplements without further licensing if such changes were within the
scope or character of the originally licensed invention ( 5.15(a)).
The 1984 rule change, however, could not be made retroactive, and
therefore had no effect on licenses granted under the old system. If an
applicant wished to broaden a pre-April 4, 1984, foreign filing license
to the scope allowed by 5.15(a), this involved filing a separate
petition under 5.15(c) in each application.
The present Act clarifies the statutory basis for the current Patent
and Trademark Office rules by providing that inventors, in most
circumstances, are not required to obtain an additional license to file
modifications, amendments, and supplements to their foreign applications
for which a foreign filing license has been obtained under 5.15(a).
Unlike the previous Office rules, these rules broaden the scope of most
existing licenses, provided that the conditions contained in the Act are
met.
The Act and these rules also address difficulties associated with
attempts to procure a retroactive foreign filing license. Some
applicants faced loss of their patent rights due to improper foreign
filings even though they believed, in good faith, that a license was not
necessary for certain minor changes to their foreign application. Court
decisions have held that supplemental information filed abroad was
exempt from the license requirement only when it was recited verbatim in
the United States patent application, or was so commonly known that it
could have been said to have been expressly disclosed in the United
States application. In re Gaertner, 604 F.2d 1348, 202 USPQ 714 (CCPA
1979). If a patent applicant did not obtain a foreign filing license
from the Office, any corresponding United States patent was at risk of
being held invalid under 35 U.S.C. 185 if technical information was
added to the foreign application, even if the technical information was
completely unrelated to United States security interests.
Loss of United States patent rights subsequent to an "inadvertent"
unlicensed foreign filing could be avoided if a retroactive license was
obtained under 35 U.S.C. 184. Twin Disc, Inc. v. United States, 10 Cl.
Ct. 713, 231 USPQ 417 (Ct. Cl. 1986) and Minnesota Mining and
Manufacturinq Co. v. Norton Co., 366 F.2d 238, 151 USPQ 1 (6th Cir.
1966), cert. denied, 385 U.S. 1005 (1967). While the Gaertner decision
defined a broad range of circumstances under which a foreign filing
license would be required, other court decisions made correction of
licensing errors difficult by setting forth various strict
interpretations of the standard of "inadvertence." Compare Iron Ore Co.
of Canada v. Dow Chemical Co., 177 USPQ 34 (D. Utah 1972), aff'd, 500
F.2d 189, 182 USPQ 520 (10th Cir. 1974) and Reese v. Dann, 391 F. Supp.
12, 185 USPQ 492 (D.D.C. 1975). An inventor could fail to meet the
standard of "inadvertence" even if the information disclosed was not
significant in nature and did not contain any sensitive national
security information. For example, one decision suggested that the
filing of information abroad was intentional because the inventor first
considered the applicability of 184. Shelco, Inc. v. Dow Chemical
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Co., 322 F. Supp. 485, 168 USPQ 395 (N.D. Ill. 1970), aff'd, 466 F.2d
613, 173 USPQ 451 (7th Cir. 1972), cert. denied, 409 U.S. 876 (1972).
Under the Shelco standard, if supplemental information had been filed
abroad as a considered, willful act, even though done through error in
the belief that the information disclosed abroad did not exceed the
scope of the disclosure in the United States patent application, the
filing would not be "inadvertent"; and, therefore, the subject
information could not qualify for a retroactive license.
The Act addresses these problems, and the rules implement the
intention of the Act. The Act changes the language of the statute to
provide that an inventor may receive a retroactive license if the
inventor can show that the premature filing of a foreign patent
application, or the submission of supplemental information in support of
a foreign patent application, was made "through error and without
deceptive intent." This criterion is equivalent to that for reissue of a
patent under 35 U.S.C. 251 to correct errors made without any deceptive
intention. The reissue error requirement has been considered by the
courts. See, e.g., In re Weiler, 790 F.2d 1576, 229 USPQ 673 (Fed. Cir.
1986) and In re Wadlinqer 496 F.2d 1200, 181 USPQ 826 (CCPA 1974). The
applicant for a retroactive license also must show that the foreign
filing did not disclose any information detrimental to the national
security and that diligence was exercised in seeking a retroactive
license once the applicant became aware of the proscribed foreign filing.
The Act became effective on August 23, 1988, but it does not affect
any final decision made by the Office or a court, nor the rights or
liabilities of any party under a patent in a case pending before a court
on the above date or under any subsequent patent deriving priority
rights from such patent under 35 U.S.C. 120 or 121. Therefore, the
retroactive effect of the Act and the rules is limited.
Comments on the Proposed Rules
Comment
One comment stated that the discussion in the proposed rulemaking of
the modification of the standard for obtaining a retroactive license
from inadvertence to "through error and without deceptive intent" should
have included a reference to In re Wadlinger, 492 F.2d 1200, 181 USPQ
826 (CCPA 1974) rather than to In re Weiler, 790 F.2d 1576, 229 U8PQ 673
(Fed. Cir. 1986) The comment stated that Wadlinger was a more
appropriate and illustrative case because it discusses more fully the
meaning of the term "error" as encompassing "inadvertence, accident or
mistake" and as having a very broad meaning. The comment also noted that
Wadlinger was referenced in comments made in the hearing on the proposed
legislation as indicative of the reissue standard being applied to
retroactive license requests
Reply
A citation to In re Wadlinger has been added to the citation of In re
Weiler in the discussion of the final rules. It was not the intent of
the Office by citing the Weiler case to suggest that decisions on
petitions for the grant of retroactive licenses would be limited by that
case. Decisions are based on the particular facts in each case and the
entire body of law with respect to the standard of "through error and
without deceptive intent."
Comment
A comment stated that the Office should provide additional examples
in the explanatory text in the final rule as to changes that may be made
to foreign applications that have been licensed under 37 CFR 5.15(a)
without obtaining any additional license. The comment pointed out that
examples were given in the 1984 rulemaking.
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Reply
The list of examples presented at the time that 37 CFR 5.15(a) was
adopted in 1984 was not intended to be all-inclusive. The Office is not
aware of any judicial decisions setting limits to changes that may be
made under a 5.15(a) license. Depending on the nature and the
criticality, changes in temperature, portions, size, etc., outside of a
previously disclosed value or range that do not change the general
nature of the invention from what was previously disclosed are within
the scope of a 5.15(a) license. However, if the newly disclosed value
or range does change the general nature of the invention from that of
the originally disclosed value or range, then a separate license is
required. Likewise, new species or subcombinations of a previously
disclosed genus or combination would appear to require an additional
license to include such a change in a foreign application.
Comment
One comment stated that the Office should provide clarification of
the attorney's ability to make decisions as to whether or not the added
subject matter, in his opinion, changes the general nature of the
invention.
Reply
Not only does the attorney have the ability to make the decision as
to whether or not the additional subject matter changes the general
nature of the invention, the attorney has the responsibility to do so.
The Office will not give advisory opinions on whether an additional
license is necessary, and will treat any provisional requests for a
prospective or retroactive license as a request for a license. The
procedure of the Office resolving any questions as to the security
inspection status of any changes to previously licensed material is
intended to apply only to those changes that have been submitted to the
Office, i.e., the Office will reply to any inquiry as to whether
previously submitted subject matter underwent, or should have undergone,
security review.
Comment
One comment questioned what would happen if an attorney on considered
judgment, honestly believed that a supplement did not change the general
nature of a licensed invention, but that judgment later proved to be
erroneous.
Reply
The Act and the rules now provide for a retroactive license to be
granted in situations where it can be shown that a filing was made
without a license through error and without deceptive intent. Thus, a
retroactive license could be sought under 5.25.
Discussion Of Specific Rule Changes
Section 5.11(a), as amended, specifies when a license is required before
filing any foreign application for patent, including any modifications,
amendments and supplements or divisions thereof. Section 5.11(a) adopts
the statutory definition of "application" in 35 U.S.C. 184. Also, the
rule, as amended, clarifies that the provisions of this section apply
only to inventions made in the United States as stated in 35 U.S.C. 184.
However, where an improvement or modification to a foreign-origin
invention is made in the United States, a license would be required for
the additional subject matter. The language proposed for 5.11(e)(3)
has been redrafted for clarity but still provides that an inventor need
not obtain a supplemental license to file modifications, amendments and
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supplements containing subject matter not disclosed in, or divisions of,
a foreign application for which an initial foreign filing license was
not required, as long as the corresponding United States application was
not required to be made available for inspection under 35 U.S.C. 181
and 5.1 and the changes did not alter the general nature of the
invention in a manner which would require the United States application
to have been made available for inspection under 35 U.S.C. 181 and
5.1. The need for a supplemental license depends on whether the changes
altered the general nature of the invention, rather than the label
applied to the changes, i.e., "Continuation", "Continuation In-Part",
"Division", etc.
Authorized parties may determine whether a particular application was
forwarded to the defense agencies for inspection under 35 U.S C. 181
either by reviewing the filing receipt to determine if a license is or
was granted, in which case security inspection did not occur, or by
reviewing the file wrapper to determine if an access acknowledgment
under 35 U.S.C. 181 is present, in which case security inspection did
occur. If verification of the security inspection status of an
application is needed, the authorized parties may submit a written
request therefor to the Office, directed to the attention of Licensing
and Review. A written response from the Office will be issued. In the
event Office records are not available, a de novo determination by the
Office will be made of the need for defense agency inspection under the
present national security standards. If security inspection was not
required under 35 U.S.C. 181, then the provisions of the Act will
convert a previously granted or implied license into one having the
scope of proposed 5.15(a).
Section 5.15(a), as amended, adopts the specific provisions of the
Act and clarifies the existing rules by expressly stating that the
license provisions of the paragraph are applicable to United States
applications which were not required to be made available for inspection
under 35 U.S.C. 181 and 5.1. The inspection provisions of 35 U.S.C.
181 delegate to the Commissioner of Patents and Trademarks the authority
to decide which applications will be forwarded to United States defense
agencies for national security inspection when the Government has no
property interest in the invention. The fact that an application was
forwarded to the defense agencies does not necessarily mean that the
application was properly within the inspection scope of 35 U.S.C. 181.
Thus, if an application was not required to be inspected but was
inspected by mistake, it is eligible for such a license. The changes to
the regulation expressly apply to modifications, amendments, and
supplements to a previously licensed foreign application, and divisions
thereof, provided the not alter the general nature of the invention in a
manner which would require a corresponding United States application to
have been made available for inspection under 35 U.S.C. 181.
The language of 5 15(a)(1) also has been clarified. If the filing
of the foreign application was pursuant to a license granted under
5.15 and issued prior to publication of the notice in the Federal
Register at 49 Fed. Reg. 13456 (April 4, 1984) for subject matter which
was not appropriate for inspection under 35 U.8.C. 181, the license is
now expanded to cover amendments, modifications, and supplements
thereto, or divisions thereof, which do not change the general nature of
the invention in a manner which would require such application to be
made available for security inspection under 35 U.S.C. 181. Also,
paragraphs (a)(3) and (a)(4) of 5.15 have been merged in order to
more clearly define the type of subsequent changes to a previously
licensed foreign patent application which may be filed without any
additional license. In particular, it is made clear that these changes
must not be such as to require the application to be made available for
security inspection. Any questions about the security inspection status
of any application or amendments, modifications, and supplements
thereto, or divisions thereof, will be handled in the manner as
described above.
Section 5.15(b), as amended, clarifies the existing rule by expressly
stating that the license provisions of 5.12(b) are applicable to
United States applications which were required to be made available for
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inspection under 35 U.S.C. 181 and 5.1. The amendments also clarify
the language of the paragraph and indicate that the more restrictive
license under this paragraph includes authority to take actions in the
foreign or international application, provided subject matter additional
to that covered by the license is not involved Section 5.15(c), as
amended, clarifies the existing rule by expressly stating that the
granting of a 5.15(a) scope to a license under 5.15(b) and
conversion provisions of this paragraph are only applicable to material
submitted under 5.13 or United States applications, which are not, or
were not, required to be made available for inspection under 35 U.S.C.
181 and 5.1.
Sections 5.15(e) and (f), as amended, substitute a reference to
5.15(a)(3) rather than to 5.15(a)(4) which has been eliminated as a
separate paragraph. Paragraph (e) also has been amended to state that
changes to the general nature of the invention, which would require the
application to have been made available for inspection under 35 U.S.C.
181 and 5.1, require a separate license.
Section 5.25(a), as amended, provides that the inventor may receive a
retroactive license if the inventor can show that the premature fi1ing
of papers in a foreign patent office was made through error and without
deceptive intent. This criterion is the same as that for "error without
any deceptive intention" for reissue of a patent and replaces the
previous standard of inadvertence. This section also has been amended to
clarify that each country in which a proscribed filing occurred must be
listed in a petition for retroactive license. Also, the rule has been
amended to define a verified statement as being in the form of either an
oath or a declaration. Finally, the rule has been clarified by defining
the period over which error without deceptive intent must be shown as
being the time leading up to and including the proscribed foreign filing
Other Considerations
The rule change is in conformity with the requirements of the Regulatory
Flexibility Act, 5 U.S.C. 601 et seq., Executive Orders 12291 and 12612,
and the Paperwork Reduction Act of 1980, 44 U.S.C. 3501 et seq.
The General Counsel of the Department of Commerce has certified to
the Acting Chief Counsel for Advocacy, Small Business Administration,
that the rule change will not have a significant adverse economic impact
on a substantial number of small entities (Regulatory Flexibility Act, 5
U.S.C. 605(b)) because the rules simplify the procedures for all United
States inventors who file and prosecute applications in foreign
countries.
The Patent and Trademark Office has determined that this rule change
is not a major rule under Executive Order 12291. The annual effect on
the economy will be less than $100 million. There will be no major
increase in costs or prices for consumers, individuals, industries,
Federal, state or local government agencies, or geographic regions.
There will be no significant adverse effects on competition, employment,
investment, productivity, innovation, or on the ability of the United
States-based enterprises to compete with foreign-based enterprises in
domestic or export markets.
The Patent and Trademark Office has also determined that this notice
has no Federalism implications affecting the relationship between the
National Government and the States as outlined in Executive Order 12612.
These rules contain a collection of information requirement subject
to the Paperwork Reduction Act which has previously been approved by the
Office of Management and Budget under Control No. 0651-0011 with an
expiration date of March 31, 1993. The average time for each petition
for license under 51.12(b) or 5.25 is estimated to be
approximately thirty (30) minutes, including time for reviewing
instructions, gathering and maintaining data needed, and completing and
reviewing the petition submission. Send comments regarding this burden
estimate to the Patent and Trademark Office, Office of Management and
Organization, Washington, D.C. 20231, and the Office of Management and
Budget, Washington, D.C. 20503 (Attention: Paperwork Reduction Project
0651-0011).
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List Of Subjects
37 CFR Part 5
Classified information, Exports, Foreign relations, Inventions and
patents.
For the reasons set forth in the preamble, 37 CFR Part 5 is amended as
set forth below.
PART 5 - SECRECY OF CERTAIN INVENTIONS
AND LICENSES TO EXPORT AND FILE
APPLICATIONS IN FOREIGN COUNTRIES
1. The authority citation for Part 5 is revised to read as follows:
Authority: 35 U.S.C. 6, 41, 181-188, as amended by the Patent Law
Foreign Filing Amendments Act of 1988, Pub. L. 100-418 102 Stat. 1567;
the Arms Export Control Act, as amended, 22 U.S. C. 2751 et seq., the
Atomic Energy Act of 1954, as amended, 42 U. S.C. 2011 et seq., and the
Nuclear Non-Proliferation Act of 1978, 22 U.S.C. 3201 et seq., and the
delegations in the regulations under these acts to the Commissioner (15
CFR 370.10(j), 22 CFR 125.04, and 10 CFR 810.7).
2. Section 5.11, paragraphs (a) and (e), are revised to read as follows:
5.11 License for filing in a foreign country an application on an
invention made in the United States or for transmitting an international
application.
(a) A license from the Commissioner of Patents and Trademarks 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 patent office or any foreign patent
agency or any international agency other than the United States
Receiving Office, if the invention was made in the United States and:
(1) An application on the invention has been on file 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.
* * * * *
(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
patent application if:
(i) a license is not, or was not, required under paragraph
(e)(2) of this section for the foreign patent application;
(ii) the corresponding United States application was not required to
be made available for inspection under 35 U.S.C. 181 and 5.1; 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 and 5.1.
* * * * *
3. Section 5.15, paragraphs (a), (b), (c), (e) and (f), are revised
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to read as follows:
5.15 Scope of license.
(a) Applications or other materials reviewed pursuant to 5.12
through 5.14, which were not required to be made available for
inspection by defense agencies under 35 U.S.C. 181 and 5.1, will be
eligible for a license of the scope provided in this paragraph. This
license permits subsequent modifications, amendments, and supplements
containing additional subject matter to, or divisions of, a foreign
patent application, if such changes to the application do not alter the
general nature of the invention in a manner which would require the
United States application to have been made available for inspection
under 35 U.S.C. 181 and 5.1. This license also covers the inventions
disclosed in foreign applications which had been granted a license under
this part prior to April 4, 1984, and which were not subject to security
inspection under 35 U.S.C. 181 and 5.1. Grant of this license
authorizes the export and filing of an application in a foreign country
or the transmitting of an international application to any patent agency
orinternational patent agency when the subject matter of the foreign or
international application corresponds to that of the domestic
application. This license includes authority:
(1) To export and file all duplicate and formal application papers in
foreign countries or with international agencies;
(2) To make amendments, modifications, and supplements, including
divisions, changes or supporting matter consisting of the illustration,
exemplification, comparison, or explanation of subject matter disclosed
in the application; and
(3) To take any action in the prosecution of the foreign or
international application provided that the adding of subject matter or
taking of any action under paragraphs (a)(1) and (2) of this section
does not change the general nature of the invention disclosed in the
application in a manner which would require such application to have
been made available for inspection under 35 U.S.C. 181 and 5.1 by
including technical data pertaining to:
(i) Defense services or articles designated in the United
States Munitions List applicable at the time of foreign filing, the
unlicensed exportation of which is prohibited pursuant to the Arms
Export Control Act, as amended, and 22 CFR Parts 121 through 130; or
(ii) Restricted Data, sensitive nuclear technology or technology
useful in the production or utilization of special nuclear material or
atomic energy, the dissemination of which is subject to restrictions of
the Atomic Energy Act of 1954, as amended, and the Nuclear
Non-Proliferation Act of 1978, as implemented by the regulations for
Unclassified Activities in Foreign Atomic Energy Frograms, 10 CFR Part
810, in effect at the time of foreign filing.
(b) Applications or other materials which were required to be
made available for inspection under 35 U.S.C. 181 and 5.1 will be
eligible for a license of the scope provided in this paragraph. Grant of
this license authorizes the export and filing of an application in a
foreign country or the transmitting of an international application to
any foreign patent agency or international patent agency. Further, this
license includes authority to export and file all duplicate and formal
papers in foreign countries or with foreign and international patent
agencies and to make amendments, modifications, and supplements to, file
divisions of, and take any action in the prosecution of the foreign or
international application, provided subject matter additional to that
covered by the license is not involved.
(c) A license granted under 5.12(b) pursuant to 5.13 or 5.14
shall have the scope indicated in paragraph (a) of this section, if it
is so specified in the license. A petition, accompanied by the required
fee (1.17(h)), may also be filed to change a license having the scope
indicated in paragraph (b) of this section to a license having the scope
indicated in paragraph (a) of this section. No such petition will be
granted if the copy of the material filed pursuant to 5.13 or any
corresponding United States application was required to be made
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available for in-spection under 35 U.S.C. 181 and 5.1. The change in
the scope of a license will be effective as of the date of the grant of
the petition.
* * * * *
(e) Any paper filed abroad or transmitted to an international patent
agency following the filing of a foreign or international application
which changes the general nature of the subject matter disclosed at the
time of filing in a manner which would require such application to have
been made available for inspection under 35 U.S.C. 181 and 5.1 or
which involves the disclosure of subject matter listed in paragraphs
(a)(3)(i) or (ii) of this section must be separately licensed in the
same manner as a foreign or international application. Further, if no
license has been granted under 5.12(a) on filing the corresponding
United States application, any paper filed abroad or with an
international patent agency which involves the disclosure of additional
subject matter must be licensed in the same manner as a foreign or
international application.
(f) Licenses separately granted in connection with two or more United
States applications may be exercised by combining or dividing the
disclosures, as desired, provided:
(1) Subject matter which changes the general nature of the subject
matter disclosed at the time of filing or which involves subject matter
listed in paragraphs (a)(3)(i) or (ii) of this section is not
introduced, and
(2) In the case where at least one of the licenses was obtained under
5.12(b), additional subject matter is not introduced.
* * * * *
4. Section 5.25, paragraph (a), is revised to read as follows:
5.25 Petition for retroactive license
(a) A petition for a retroactive license under 35 U.S.C. 184 shall be
presented in accordance with 5.13 or 5.14 (a), and shall include:
(1) A listing of each of the foreign countries in which the
unlicensed patent application material was filed,
(2) The dates on which the material was filed in each country,
(3) A verified statement (oath or declaration) containing:
(i) An averment' that the subject matter in question was not under a
secrecy order at the time it was filed abroad, and that it is not
currently under a secrecy order,
(ii) A showing that the license has been diligently sought
after discovery of the proscribed foreign filing, and
(iii) An explanation of why the material was filed abroad through
error and without deceptive intent without the required license under
5.11 first having been obtained, and
(4) The required fee ( 1.17(h)).
The above explanation must include a showing of facts rather than a
mere allegation of action through error and without deceptive intent.
The showing of facts as to the nature of the error should include
statements by those persons having personal knowledge of the acts
regarding filing in a foreign country and should be accompanied by
copies of any necessary supporting documents such as letters of
transmittal or instructions for filing. The acts which are alleged to
constitute error without deceptive intent should cover the period
leading up to and including each of the proscribed foreign filings.
* * * * *
Nov. 28, 1990 HARRY F. MANBECK, JR.
Assistant Secretary and Commissioner
of Patents and Trademarks
[1123 OG 20]