U.S. Patent Office Issues Reminder on Scope of Foreign Filing Licenses
The U.S. Patent and Trademark Office has issued a notice reminding applicants and registered patent practitioners 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.
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USPTO states that applicants who are considering exporting subject matter abroad for the preparation of patent applications to be filed in the U.S. should contact the Bureau of Industry and Security for the appropriate clearances.
(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.)
Foreign Filing License Exports Authorized for Data, Technology Specific to Filing
USPTO states that if the invention for which a foreign patent application is being filed was made in the U.S., technical data 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.
Applicants and registered patent practitioners are also advised that foreign filing licenses 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, such as short abstracts, slides and 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 filing license request.)
USPTO Notice Does Not Excuse, Affect Prior Failure to Comply With Regulations
USPTO notes that this notice does not change existing law or regulations and does not excuse or otherwise affect the legal consequence of a failure to comply with existing law or regulations that occurred prior to the effective date of its notice (July 23, 2008).
(USPTO has established a Licensing and Review Web page that includes frequently asked questions regarding foreign filing licenses and related matters, available at http://www.uspto.gov/web/offices/pac/dapp/opla/lr/licensing_review.htm.)
USPTO contact - Mike Carone (571) 272-6873
USPTO notice (D/N PTO-P-2008-0024, FR Pub 07/23/08) available at http://edocket.access.gpo.gov/2008/pdf/E8-16830.pdf