Scope of Foreign Filing Licenses, 42781 [E8-16830]

Agencies

• DEPARTMENT OF COMMERCE
• United States Patent and Trademark Office
• Patent and Trademark Office

[Federal Register Volume 73, Number 142 (Wednesday, July 23, 2008)]
[Notices]
[Page 42781]
From the Federal Register Online via the Government Printing Office [www.gpo.gov]
[FR Doc No: E8-16830]


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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.

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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 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:/
/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 https://www.bis.doc.gov. Questions regarding the EAR should be 
directed to the BIS's Outreach and Educational Services Division at 
(202) 482-4811.

    Dated: July 16, 2008.
Jon W. Dudas,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
 [FR Doc. E8-16830 Filed 7-22-08; 8:45 am]
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