MPEP § 140 — MPEP § 140
Current through: 2022-07-01

140-Foreign Filing Licenses 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Chapter 0100 

 Section 140 
 

 
 
 
 
 
 140 Foreign Filing Licenses [R-07.2022]

 
 35 U.S.C. 182 
 Abandonment of invention for unauthorized
 disclosure. 

 The invention disclosed in an application for patent subject to an order
 made pursuant to section 181 may be held abandoned upon its being established by
 the Commissioner of Patents that in violation of said order the invention has been
 published or disclosed or that an application for a patent therefor has been filed in a
 foreign country by the inventor, his successors, assigns, or legal representatives, or
 anyone in privity with him or them, without the consent of the Commissioner of Patents.
 The abandonment shall be held to have occurred as of the time of violation. The consent
 of the Commissioner of Patents shall not be given without the concurrence of the heads
 of the departments and the chief officers of the agencies who caused the order to be
 issued. A holding of abandonment shall constitute forfeiture by the applicant, his
 successors, assigns, or legal representatives, or anyone in privity with him or them, of
 all claims against the United States based upon such invention. 
 

 

 
 35 U.S.C. 184 
 Filing of application in foreign country. 

 
 (a) FILING IN FOREIGN COUNTRY.—Except when authorized by
 a license obtained from the Commissioner of Patents a person shall not file or
 cause or authorize to be filed in any foreign country prior to six months after
 filing in the United States an application for patent or for the registration of a
 utility model, industrial design, or model in respect of an invention made in this
 country. A license shall not be granted with respect to an invention subject to an
 order issued by the Commissioner of Patents pursuant to section 181 
 without the concurrence of the head of the departments and the chief officers of
 the agencies who caused the order to be issued. The license may be granted
 retroactively where an application has been filed abroad through error and the
 application does not disclose an invention within the scope of section
 181 .
 

 (b) APPLICATION.—The term
 
 "application"
 
 
 when used in this chapter
 includes applications and any modifications, amendments, or supplements thereto,
 or divisions thereof. 
 

 (c) SUBSEQUENT MODIFICATIONS, AMENDMENTS, AND
 SUPPLEMENTS.—The scope of a license shall permit subsequent modifications,
 amendments, and supplements containing additional subject matter if the
 application upon which the request for the license is based is not, or was not,
 required to be made available for inspection under section 181 
 and if such modifications, amendments, and supplements do not change the general
 nature of the invention in a manner which would require such application to be
 made available for inspection under such section 181 . In any case in
 which a license is not, or was not, required in order to file an application in
 any foreign country, such subsequent modifications, amendments, and supplements
 may be made, without a license, to the application filed in the foreign country if
 the United States application was not required to be made available for inspection
 under section
 181 and if such modifications, amendments, and supplements
 do not, or did not, change the general nature of the invention in a manner which
 would require the United States application to have been made available for
 inspection under such section 181 .
 

 
 

 

 
 35 U.S.C. 185 
 Patent barred for filing without license. 

 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. A United States patent issued to such person, his
 successors, assigns, or legal representatives shall be invalid, unless the failure to
 procure such license was through error, and the patent does not disclose subject matter
 within the scope of section 181 .
 

 

 

 
 35 U.S.C. 186 
 Penalty. 

 Whoever, during the period or periods of time an invention has been
 ordered to be kept secret and the grant of a patent thereon withheld pursuant to
 section
 181 , shall, with knowledge of such order and without due
 authorization, willfully publish or disclose or authorize or cause to be published or
 disclosed the invention, or material information with respect thereto, or whoever
 willfully, in violation of the provisions of section 184 , shall file or cause or
 authorize to be filed in any foreign country an application for patent or for the
 registration of a utility model, industrial design, or model in respect of any invention
 made in the United States, shall, upon conviction, be fined not more than $10,000 or
 imprisoned for not more than two years, or both.
 

 

 

 
 35 U.S.C. 187 
 Nonapplicability to certain persons 

 The prohibitions and penalties of this chapter shall not apply to any
 officer or agent of the United States acting within the scope of his authority, nor to
 any person acting upon his written instructions or permission.
 

 

 

 
 35 U.S.C. 188 
 Rules and regulations, delegation of power. 

 The Atomic Energy Commission, the Secretary of a defense department, the
 chief officer of any department or agency of the Government designated by the President
 as a defense agency of the United States, and the Secretary of Commerce, may separately
 issue rules and regulations to enable the respective department or agency to carry out
 the provisions of this chapter, and may delegate any power conferred by this
 chapter.
 

 

 

 
 37 CFR 5.11 License for filing in, or exporting to, a foreign country an application on an
 invention made in the United States or technical data relating thereto. 

 
 (a) A license from the Commissioner for Patents under 35 U.S.C.
 184 is required before filing any application for patent
 including any modifications, amendments, or supplements thereto or divisions
 thereof or for the registration of a utility model, industrial design, or model,
 in a foreign country or in a foreign or international intellectual property
 authority (other than the United States Patent and Trademark Office acting as a
 Receiving Office for international applications ( 35 U.S.C.
 361 , 37 CFR 1.412 ) or as an office
 of indirect filing for international design applications ( 35 U.S.C.
 382 , 37 CFR 1.1002 )), if the
 invention was made in the United States, and:
 
 (1) An application on the invention has been filed in the United
 States less than six months prior to the date on which the application is to
 be filed; or
 

 (2) No application on the invention has been filed in the United
 States.
 

 
 

 (b) The license from the Commissioner for Patents referred to in
 paragraph (a) of this section would also authorize the export of technical data
 abroad for purposes related to:
 
 (1) The preparation, filing or possible filing,
 and prosecution of a foreign application; and
 

 (2) The use of a World Intellectual Property
 Organization online service for preparing an international application for
 filing with the United States Patent and Trademark Office acting as a
 Receiving Office ( 35 U.S.C. 361 ,
 37 CFR
 1.412 ) without separately complying with the
 regulations contained in 22 CFR parts 120 through 130 (International Traffic
 in Arms Regulations of the Department of State), 15 CFR parts 730 through
 774 (Export Administration Regulations of the Bureau of Industry and
 Security, Department of Commerce), and 10 CFR part 810 (Assistance to
 Foreign Atomic Energy Activities Regulations of the Department of
 Energy).
 

 
 

 (c) Where technical data in the form of a patent application, or in any
 form, are being exported for purposes related to the preparation, filing or
 possible filing and prosecution of a foreign application, without the license from
 the Commissioner for Patents referred to in paragraphs (a) or (b) of this section,
 or on an invention not made in the United States, the export regulations contained
 in 22 CFR parts 120 through 130 (International Traffic in Arms Regulations of the
 Department of State), 15 CFR parts 730 through 774 (Export Administration
 Regulations of the Bureau of Industry and Security, Department of Commerce) and 10
 CFR part 810 (Assistance to Foreign Atomic Energy Activities Regulations of the
 Department of Energy) must be complied with unless a license is not required
 because a United States application was on file at the time of export for at least
 six months without a secrecy order under § 5.2 being placed thereon. The term
 “exported” means export as it is defined in 22 CFR part 120, 15 CFR part 734 and
 activities covered by 10 CFR part 810.
 

 (d) If a secrecy order has been issued under § 5.2 , an
 application cannot be exported to, or filed in, a foreign country (including an
 international agency in a foreign country), except in accordance with §
 5.5 .
 

 (e) No license pursuant to paragraph (a) of this section is
 required:
 
 (1) If the invention was not made in the United States, or

 (2) If the corresponding United States application is not subject
 to a secrecy order under § 5.2 , and was filed
 at least six months prior to the date on which the application is filed in a
 foreign country, or
 

 (3) For subsequent modifications, amendments and supplements
 containing additional subject matter to, or divisions of, a foreign
 application if:
 
 (i) A license is not, or was not, required under paragraph
 (e)(2) of this section for the foreign application;
 

 (ii) The corresponding United States application was not
 required to be made available for inspection under 35 U.S.C.
 181 ; and
 

 (iii) Such modifications, amendments, and supplements do not,
 or did not, change the general nature of the invention in a manner
 which would require any corresponding United States application to be
 or have been available for inspection under 35 U.S.C.
 181 .
 

 
 

 
 

 (f) A license pursuant to paragraph (a) of this section can be revoked
 at any time upon written notification by the United States Patent and Trademark
 Office. An authorization to file a foreign application resulting from the passage
 of six months from the date of filing of a United States patent application may be
 revoked by the imposition of a secrecy order.
 

 
 

 

 
 37 CFR 5.12 Petition for license. 

 
 (a) Filing of an application in the United States Patent and Trademark
 Office on an invention made in the United States will be considered to include a
 petition for license under 35 U.S.C. 184 for the subject
 matter of the application. The filing receipt or other official notice will
 indicate if a license is granted. If the initial automatic petition is not
 granted, a subsequent petition may be filed under paragraph (b) of this
 section.
 

 (b) A petition for license must include the fee set forth in §
 1.17(g) of this chapter, the petitioner’s address, and full
 instructions for delivery of the requested license when it is to be delivered to
 other than the petitioner. The petition should be presented in letter form.
 

 
 

 

 
 37 CFR 5.13 Petition for license; no corresponding application. 

 If no corresponding national, international design, or international
 application has been filed in the United States, the petition for license under
 § 5.12(b) must also be accompanied by a legible copy of the
 material upon which a license is desired. This copy will be retained as a measure of the
 license granted.
 

 

 

 
 37 CFR 5.14 Petition for license; corresponding U.S. application. 

 
 (a) When there is a corresponding United States application on file, a
 petition for license under § 5.12(b) must also identify
 this application by application number, filing date, inventor, and title, but
 a copy of the material upon which the license is desired is not required. The
 subject matter licensed will be measured by the disclosure of the United States
 application.
 

 (b) Two or more United States applications should not be referred to in
 the same petition for license unless they are to be combined in the foreign or
 international application, in which event the petition should so state and the
 identification of each United States application should be in separate
 paragraphs.
 

 (c) Where the application to be filed or exported abroad contains
 matter not disclosed in the United States application or applications, including
 the case where the combining of two or more United States applications introduces
 subject matter not disclosed in any of them, a copy of the application as it is to
 be filed or exported abroad, must be furnished with the petition. If, however, all
 new matter in the application to be filed or exported is readily identifiable, the
 new matter may be submitted in detail and the remainder by reference to the
 pertinent United States application or applications.
 

 
 

 

 
 37 CFR 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 , will be eligible for a license of the scope provided in
 this paragraph (a). This license permits subsequent modifications, amendments, and
 supplements containing additional subject matter to, or divisions of, a foreign
 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 . Grant of this
 license authorizes the export of technical data pursuant to § 5.11(b) and
 the filing of an application in a foreign country or with any foreign or
 international intellectual property authority when the technical data and the
 subject matter of the foreign application correspond to that of the application or
 other materials reviewed pursuant to §§ 5.12 through
 5.14 , upon which the license was granted. This license
 includes the authority:
 
 (1) To export and file all duplicate and formal application
 papers in foreign countries or with foreign or international intellectual
 property authorities;
 

 (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
 application provided that the adding of subject matter or taking of any
 action under paragraphs (a)(1) or (2) of this section does not change the
 general nature of the invention disclosed in the application in a manner
 that would require such application to have been made available for
 inspection under 35 U.S.C. 181 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 120 through 130;
 or
 

 (ii) Restricted Data, sensitive nuclear technology or
 technology useful in the production or utilization of special nuclear
 material or atomic energy, 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 Assistance to Foreign Atomic Energy Activities, 10 CFR
 part 810, in effect at the time of foreign filing.
 

 
 

 
 

 (b) Applications or other materials that were required to be made
 available for inspection under 35 U.S.C. 181 will be eligible
 for a license of the scope provided in this paragraph (b). Grant of this license
 authorizes the export of technical data pursuant to § 5.11(b) and the filing of an
 application in a foreign country or with any foreign or international intellectual
 property authority. Further, this license includes the authority to export and
 file all duplicate and formal papers in foreign countries or with foreign or
 international intellectual property authorities and to make amendments,
 modifications, and supplements to; file divisions of; and take any action in the
 prosecution of the foreign 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(g) of this chapter), 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 available for
 inspection under 35 U.S.C. 181 . The change in the scope of a license will be
 effective as of the date of the grant of the petition.
 

 (d) In those cases in which no license is required to file or export
 the foreign application, no license is required to file papers in connection with
 the prosecution of the foreign application not involving the disclosure of
 additional subject matter.
 

 (e) Any paper filed abroad or transmitted to a foreign or international
 intellectual property authority following the filing of a foreign application that
 changes the general nature of the subject matter disclosed at the time of filing
 in a manner that would require such application to have been made available for
 inspection under 35 U.S.C. 181 or that involves the disclosure of subject
 matter listed in paragraph (a)(3)(i) or (ii) of this section must be separately
 licensed in the same manner as a foreign application. Further, if no license has
 been granted under § 5.12(a) after filing the
 corresponding United States application, any paper filed abroad or with a foreign
 or international intellectual property authority that involves the disclosure of
 additional subject matter must be licensed in the same manner as a foreign
 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.
 

 
 

 (g) A license does not apply to acts done before the license was
 granted. See § 5.25 for petitions for
 retroactive licenses.
 

 
 

 

 
 37 CFR 5.18 Arms, ammunition, and implements of war. 

 
 (a) The exportation of technical data relating to arms, ammunition, and
 implements of war generally is subject to the International Traffic in Arms
 Regulations of the Department of State (22 CFR parts 120 through 130); the
 articles designated as arms, ammunitions, and implements of war are enumerated in
 the U.S. Munitions List (22 CFR part 121). However, if a patent applicant complies
 with regulations issued by the Commissioner for Patents under 35 U.S.C.
 184 , no separate approval from the Department of State is
 required unless the applicant seeks to export technical data exceeding that used
 to support a patent application in a foreign country. This exemption from
 Department of State regulations is applicable regardless of whether a license from
 the Commissioner for Patents is required by the provisions of §§
 5.11 and 5.12 (22 CFR part
 125).
 

 (b) When a patent application containing subject matter on the
 Munitions List (22 CFR part 121) is subject to a secrecy order under §
 5.2 and a petition is made under §
 5.5 for a modification of the secrecy order to permit
 filing abroad, a separate request to the Department of State for authority to
 export classified information is not required (22 CFR part 125).
 

 
 

 

 
 37 CFR 5.19 Export of technical data. 

 
 (a) Under regulations (15 CFR 734.3(b)(1)(v)) established by the
 Department of Commerce, a license is not required in any case to file a patent
 application or part thereof in a foreign country if the foreign filing is in
 accordance with the regulations (§§ 5.11 through 5.25 ) of the
 U.S. Patent and Trademark Office.
 

 (b) An export license is not required for data contained in a patent
 application prepared wholly from foreign-origin technical data where such
 application is being sent to the foreign inventor to be executed and returned to
 the United States for subsequent filing in the U.S. Patent and Trademark Office
 (15 CFR 734.10(a)).
 

 
 

 

 
 37 CFR 5.20 Export of technical data relating to sensitive nuclear technology. 

 Under regulations (10 CFR 810.7) established by the United States
 Department of Energy, an application filed in accordance with the regulations (§§
 5.11 through 5.25 ) of the Patent and Trademark
 Office and eligible for foreign filing under 35 U.S.C. 184 , is considered to be
 information available to the public in published form and a generally authorized
 activity for the purposes of the Department of Energy regulations.
 

 

 

 
 37 CFR 5.25 Petition for retroactive license. 

 
 (a) A petition for 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 aboard [sic], 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 without the required license under § 5.11 first having been obtained, and
 

 
 

 (4) The required fee (§ 1.17(g) of this chapter).
 

 
 

 (b) The explanation in paragraph (a) of this section must
 include a showing of facts rather than a mere allegation of action through error.
 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 should cover the period leading up to and including
 each of the proscribed foreign filings.
 

 (c) If a petition for a retroactive license is denied, a
 time period of not less than thirty days shall be set, during which the petition
 may be renewed. Failure to renew the petition within the set time period will
 result in a final denial of the petition. A final denial of a petition stands
 unless a petition is filed under § 1.181 within two months of the
 date of the denial. If the petition for a retroactive license is denied with
 respect to the invention of a pending application and no petition under §
 1.181 has been filed, a final rejection of the application
 under 35
 U.S.C. 185 will be made.
 

 
 

 

 In the interests of national security, the United States government imposes
 restrictions on the export of technical information. These restrictions are administered by
 the Departments of Commerce, State, and/or Energy depending on the subject matter involved.
 For the filing of patent applications and registrations of industrial designs in foreign
 countries, the authority for export control has been delegated to the Commissioner for
 Patents (note that the term 
 "Commissioner of
 Patents"
 
 
 is used in Chapter 17 of title 35 of the U.S. Code, but
 
 "Commissioner for Patents"
 
 
 is used in most of the
 remainder of the statute and throughout title 37 of the Code of Federal Regulations; both
 titles are understood to represent the same individual). Note that the export of subject
 matter abroad for purposes not related to foreign filing of a patent application or a
 registration of an industrial design, such as preparing an application in a foreign country
 for subsequent filing in the USPTO is not covered by any license from the USPTO. Applicants
 are directed to the Bureau of Industry and Security at the Department of Commerce for the
 appropriate clearances. For information on the requirements to export technical data abroad
 for purposes relating to the use of a World Intellectual Property Organization online
 service (ePCT) for preparing an international application for filing with the United States
 Receiving Office, see MPEP §§ 1821 and 1832 .
 

 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. 37 CFR 5.11(e)(2) .
 

 There are several means by which a foreign filing license may be issued.
 First, every U.S. origin application filed in the USPTO is considered to include an
 implicit petition for a foreign filing license. The grant of a license is not immediate or
 even ensured. If the application is not marked by the security screeners, the petition is
 granted. The filing receipt or other official notice will indicate if a foreign filing
 license is granted. The license becomes effective on the date shown. Further, grant of this
 license is made of record in the application file. The scope of this license is quite broad
 as set forth in 37 CFR
 5.15(a) .
 

 I. PETITIONS FOR FOREIGN FILING LICENSE UNDER 37 CFR 5.12(b) Pursuant to 37 CFR 5.12(a) , the filing of an
 application on an invention made in the United States will be implicitly considered to
 include a petition for license under 35 U.S.C. 184 for the subject matter
 of the application. Explicit petitions for foreign filing licenses will also be accepted
 in accordance with 37
 CFR 5.12(b) . Such petitions may be hand carried to the Office,
 faxed to Licensing and Review, or submitted via EFS-Web. See MPEP §§ 502 ,
 502.01 and 502.05 . Applicants may be interested in
 such petitions in cases: 
 

 
 (A) in which the filing receipt license is not granted; 

 (B) in which the filing receipt has not yet been issued
 ( 37 CFR
 5.14(a) or (b));
 

 (C) in which there is no corresponding U.S. application
 ( 37 CFR
 5.13 ); 
 

 (D) in which subject matter additional to that already licensed is
 sought to be licensed ( 37 CFR 5.14(c) and 5.15(e));
 or
 

 (E) in which expedited handling is requested. 

 
 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. Petitions
 under 37 CFR
 5.14(c) are not ordinarily made of record in the application
 file.
 

 Applicants granted a license under 37 CFR 5.12(b) having the relatively
 narrow scope indicated in 37 CFR 5.15(b) may petition under
 37 CFR
 5.15(c) to convert the license to the broad scope of
 37 CFR
 5.15(a) . A fee is charged for such a petition. See
 37 CFR
 1.17(g) . If the petition is granted, the change in the scope of
 the license is effective as of that day.
 

 Generally, a license will be granted, if there is no national security
 concern, within 3 business days from receipt of the petition filed under
 37 CFR
 5.12(b) in Licensing and Review. Applicants are strongly
 encouraged to hand deliver or fax the license request directly to Licensing and Review
 at 571-270-9959 (preferred) or 571-273-0185. Applicants should also provide a contact
 number or fax number to which the license should be sent. Without this information, the
 license will be mailed to the requester, thereby delaying the receipt of the
 license.
 

 II. RETROACTIVE LICENSES 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. Note that for petitions filed prior to
 September 16, 2012, the petition must specify that the error occurred without deceptive
 intent (see pre-AIA 37
 CFR 5.25(a)(3)(iii) and (b) ). Licenses under 37 CFR 5.25 are
 only made retroactive with respect to specific acts of foreign filing, and therefore the
 countries, the actual dates of filing and the establishing of the nature of the error
 must be provided for each act of proscribed foreign filing for which a retroactive
 license is sought. Also, the required verified statement must be in oath or declaration
 form.
 

 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. Revocation of a filing receipt license
 ( 37 CFR
 5.12(a) ) does not necessarily mean that a petition under
 37 CFR
 5.12(b) for a license of narrower scope will not be granted. The
 revocation becomes effective on the date on which the notice is mailed. Foreign filings,
 which occurred prior to revocation, need not be abandoned or otherwise specially
 treated; however, additional filings without a license are not permitted unless 6 months
 have elapsed from the filing of any corresponding U.S. application. Papers and other
 documents needed in support of prosecution of foreign applications may be sent abroad if
 they comply with any pertinent export regulations. Of course, if and once a Secrecy
 Order is issued, the restrictions thereof must immediately be observed.
 

 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.
 

 The penalties for failing to obtain any necessary license to file a
 patent application abroad are set forth in 35 U.S.C. 182 , 35 U.S.C. 185 , and
 35 U.S.C.
 186 and include loss of patenting rights in addition to possible
 fine or imprisonment. Petitions for retroactive foreign filing licenses are processed by
 Licensing and Review and decided by the Office of Petitions. See MPEP § 1002.02(b) . If
 applicant also wishes an expedited license for future filings, a separate expedited
 license request must be filed with Licensing and Review.
 

 III. IMPROPER FILING WITHOUT A FOREIGN FILING
 LICENSE If, upon examining an application, the examiner learns of the existence
 of a corresponding foreign application which appears to have been filed before the
 United States application had been on file for 6 months, and if the invention apparently
 was made in this country, the examiner shall refer the application to Licensing and
 Review calling attention to the foreign application. Pending investigation of the
 possible violation, the application may be returned to the TC for prosecution on the
 merits. When it is otherwise in condition for allowance, the application will be again
 submitted to Licensing and Review unless the latter has already reported that the
 foreign filing involves no bar to the United States application.
 

 If it should be necessary to take action under 35 U.S.C. 185 ,
 Licensing and Review will request transfer of the application to it.
 

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 101-General 

 102-Information as to Status of an Application 

 103-Right of Public To Inspect Patent Files and Some Application Files 

 104-Power to Inspect Application 

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 106-Control of Inspection by Assignee 
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 130-Examination of Secrecy Order Cases 

 131‑139-[Reserved] 

 140-Foreign Filing Licenses 

 141‑149-[Reserved] 

 150-Statements to DOE and NASA 

 151-Content of the Statements 

 

 

 
 

 
 
 

 
 

 

 
 
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