Need a Foreign Filing License?

The world of patent acquisition and enforcement is highly regional. Getting a patent in one country does not automatically grant protection in other countries. As a result, a patentee must file for several patents in each country in which he or she wants protection. But a patentee filing for patent protection regarding an invention made in the United States needs to take caution. That is, in the interests of national security, the U.S. imposes restrictions on the export of technical information.

According to 37 C.F.R. § 5.11, a foreign license is required before filing any application for a patent 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. Here, U.S. inventors must receive a foreign filing license before filing an application in other countries. Failure to do so can lead to invalidation of subsequently granted patents (35 U.S.C. §185), and a fine of up to $10,000 or imprisonment for up to two years, or both, if the patentee is convicted of willfully disclosing subject matter subject to a Secrecy Order, (35 U.S.C. §186).

While this may seem daunting, obtaining a foreign filing license is simple. In fact, many patentees receive one without any additional work! There are two ways to receive a foreign filing license in the U.S. First, a proactive applicant can receive a foreign filing license by filing a petition under 37 C.F.R. § 5.12(b). This petition is suggested to be hand carried to the USPTO, but it can also be faxed to the Licensing and Review Office (571.273.0185). Filing for a foreign license under § 5.12(b) is especially helpful for applicants looking to file in another country immediately. Typically, such petitions are granted within three business days from when the USPTO receives the petition.

Second, a patentee can simply wait six months and receive implicit consideration under 37 C.F.R.§  5.12(a). According to 35 U.S.C. § 184, all U.S. patent applications will be implicitly considered to include a petition for a foreign filing license; the issuance of a filing receipt or other official notice will indicate if such license is granted. Such petitions are not guarantees of receiving a foreign filing license: the applications must not have been marked by security screeners. In other words, these applications will receive a foreign filing license in six months so long as the subject matter is not subject to a Secrecy Order (37 C.F.R. § 5.11(e)(2)). Under § 5.12(a), an applicant’s foreign filing license becomes effective on the date shown on the filing receipt or other received official notice.

Additionally, a patentee can even receive a retroactive filing license under 37 C.F.R. § 5.25. This petition should be used only if an unlicensed foreign filing occurred through error and is very limited in scope: it would cover only the necessary specific filings in the necessary foreign countries. Thus, for each act, the applicant/patentee must provide the USPTO with the countries, the actual dates of filing, the nature of the error, and a verified statement in the form of either an oath or declaration.

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