| General Information |
Referenced Items (174, 175, 176, 177, 178, 179, 180, 181, 182, 183, 184, 185, 186, 187, 188, 189, 190) |
(177) DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
[Docket No.: PTO-P-2008-0024]
Scope of Foreign Filing Licenses
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Notice.
SUMMARY: Applicants and registered patent practitioners are reminded that
the export of subject matter abroad pursuant to a license from the United
States Patent and Trademark Office (USPTO), such as a foreign filing
license, is limited to purposes related to the filing of foreign patent
applications. Applicants who are considering exporting subject matter
abroad for the preparation of patent applications to be filed in the United
States should contact the Bureau of Industry and Security (BIS) at the
Department of Commerce for the appropriate clearances.
DATES: Effective Date: July 23, 2008.
FOR FURTHER INFORMATION CONTACT: Mike Carone, Supervisory Patent Examiner,
Technology Center 3600, by telephone at (571) 272-6873.
SUPPLEMENTARY INFORMATION: The USPTO has become aware that a number of law
firms or service provider companies located in foreign countries are
sending solicitations to U.S. registered patent practitioners offering
their services in connection with the preparation of patent applications to
be filed in the United States. Applicants and registered patent
practitioners are reminded that the export of subject matter abroad
pursuant to a license from the USPTO, such as a foreign filing license, is
limited to purposes related to the filing of foreign patent applications.
Applicants who are considering exporting subject matter abroad for the
preparation of patent applications to be filed in the United States should
contact the Bureau of Industry and Security (BIS) at the Department of
Commerce for the appropriate clearances. See MPEP Sec. 140 (8th ed., Rev.
5, Aug. 2006). The BIS has promulgated the Export Administration
Regulations (EAR) governing exports of dual-use commodities, software, and
technology, including technical data, which are codified at 15 CFR Parts
730-774. Furthermore, if the invention was made in the United States,
technical data in the form of a patent application, or in any form, can
only be exported for purposes related to the preparation, filing or
possible filing and prosecution of a foreign patent application, after
compliance with the EAR or following the appropriate USPTO foreign filing
license procedure. See 37 CFR 5.11(c). A foreign filing license from the
USPTO does not authorize the exporting of subject matter abroad for the
preparation of patent applications to be filed in the United States.
The Commissioner for Patents has been delegated the authority for
controlling exports of technology for purposes of the filing of patent
applications in foreign countries. See 15 CFR 734.3(b)(1)(v) and 734.10(b)
and 35 U.S.C. 184. The USPTO grants foreign filing licenses in accordance
with USPTO regulations. See 37 CFR Part 5. The scope of a foreign filing
license granted by the USPTO is set forth in 37 CFR 5.15. Applicants and
registered patent practitioners are also advised that foreign filing
licenses (for the filing of a patent application in a foreign country) do
not authorize the export of any technology that is not specifically
submitted to the USPTO as part of a U.S. patent application or a petition
for a foreign filing license. For example, the USPTO has received short
abstracts, PowerPoint[supreg] slides and even titles of inventions as the
disclosure for which a foreign filing license is requested. Although the
USPTO will usually process such requests, any foreign filing license
granted under 37 CFR 5.15(a) or 5.15(b) on such short description may not
authorize filing abroad the ultimate resulting patent applications and may
not authorize any additional material added after the initial foreign
 Top of Notices (177) December 26, 2023 |
US PATENT AND TRADEMARK OFFICE |
1517 CNOG 556 |
filing license request. Such additional material that was not submitted to
the USPTO for its review may be deemed to have altered "the general nature
of the invention in a manner which would require such application to be
made available for inspection under such section 181." See 35 U.S.C. 184.
The USPTO has established a Licensing and Review Web page on its Web site
that includes frequently asked questions regarding foreign filing licenses
and related matters. This Web page is located at
http://frwebgate.access.gpo.gov/cgi-bin/leaving.cgi?from=leavingFR.
html&log=linklog&to=http://www.uspto.gov/web/offices/pac/dapp/opla/lr/
licensing_review.htm.
This notice does not change existing law or regulations. Thus, while the
notice is effective on July 23, 2008, this notice does not excuse or
otherwise affect the legal consequence of a failure to comply with existing
law or regulations that occurred prior to July 23, 2008.
Information regarding the EAR may be obtained from the BIS Web site at
http://frwebgate.access.gpo.gov/cgi-bin/leaving.cgi?from=leavingFR.
html&log=linklog&to=http://www.bis.doc.gov. Questions regarding the EAR
should be directed to the BIS's Outreach and Educational Services Division
at (202) 482-4811.
July 16, 2008 JON W. DUDAS
Under Secretary of Commerce for
Intellectual Property and Director of the
United States Patent and Trademark Office
[1333 OG 159]