Licensing and Review - Frequently Asked Questions (FAQs)
The U.S. Patent and Trademark Office (USPTO) has an office called Licensing and Review that performs certain functions, such as clearance of subject matter, to ensure compliance with the Patent Secrecy Act. The following are frequently asked questions related to Licensing and Review and foreign filing licenses.
What is the role of Licensing and Review?
The role of Licensing and Review (L&R) is to administer the Patent Secrecy Act as defined by 35 U.S.C. 181-186 and 37 CFR part 5. The primary function of this Act is to prevent publication of an application as a patent or a patent application publication where such disclosure would be detrimental to U.S. national security. Additionally, the Act provides for the licensing of applications for export for the purposes of filing for patents abroad.
The duties of L&R include:
- Reviewing all applications for patent (provisional, utility, design, PCT (where the U.S. is the receiving office)) to determine whether a foreign filing license may be granted;
- Managing all existing secrecy orders pursuant to 35 U.S.C. 181 and 37 CFR part 5;
- Treating all petitions for expedited foreign filing licenses pursuant to 37 CFR 5.12-5.14; and
- Policing the property rights of the National Aeronautics and Space Administration (NASA) and the Department of Energy (DOE) by administering a portion of the NASA Act as provided for in 42 U.S.C. 2457, and a portion of the Atomic Energy Act as provided for in 42 U.S.C. 2181-2182.
What are the various options for filing a petition for expedited foreign filing license?
A petition for an expedited foreign filing license based on a pending patent application (37 CFR 5.14), or for material not related to any pending application (37 CFR 5.13), may be mailed, faxed, hand-delivered or filed thru EFS-Web (provided an application is on file).
Facsimiles must be sent to: 571 273-0185
Hand delivery: Room 4B31, 501 Dulany Street (Knox Building), Alexandria Virginia 22314.
Regular mail: Mail Stop: L&R
Commissioner for Patents
P.O. Box 1450
Alexandria, VA 22313-1450
All licenses will be mailed to the appropriate correspondence address, however, a courtesy copy may be provided by facsimile if such notification is requested.
How quickly can Licensing and Review process a petition for expedited license?
Licensing and Review (L&R) strives to process petitions for expedited license within three business days of receipt and all petitions are treated in the order in which they are received. In limited instances, licenses may be processed quicker upon a showing that a bar date is imminent. It is suggested that after filing the petition, applicant alert L&R to the need for special handling.
Does an applicant have to file a petition for a license with a new patent application to obtain a foreign filing license?
- If an expedited decision is not needed, the mere filing of a provisional, design, utility or PCT (in the US receiving office) is considered a petition for a foreign filing license. See 37 CFR 5.12(a).
- If expedited processing is required, then a separate petition must be submitted to L&R pursuant to 37 CFR 5.12(b).
- Can a petition for an expedited license be filed via EFS-Web?
If applicant has a patent application on file, the request for an expedited license may be filed as a follow-on paper to that application. An expedited request for a license where there is no pending application on file cannot be filed thru EFS-Web at this time.
- Must an application for an invention made at least partially in the U.S. be filed in the U.S. prior to filing abroad?
No, 35 U.S.C. 184 merely requires applicant to obtain a license from the USPTO prior to filing in a foreign country. This may be done in accordance with 37 CFR 5.13.
- Does a foreign filing license from the USPTO apply to any country?
Yes, a license for the USPTO is not country specific. However, applicant must also abide by the various regulations and restrictions related to sending information to certain countries. For more information, please contact the Bureau of Foreign Assets at the Department of Treasury, the Bureau of Industry and Security at the Department of Commerce, or both.
Does a foreign filing license from the USPTO permit an applicant to send information abroad for the preparation of a patent application to be filed first in the US?
- No. The delegation of authority to the USPTO from the Bureau of Industry and Security (BIS) does not provide for this. Applicants are directed to BIS for licensing requests of this type. They may be reached at 202-482-4811.
- I filed a provisional application and did not receive a foreign filing license. Six months have passed and having received no secrecy order, I foreign filed the application. I later filed the nonprovisional application and again did not receive a foreign filing license. Why didn’t my implied provisional license apply to my nonprovisional application? Is there an issue with my foreign filing in light of this most recent failure to receive a license?
The USPTO does not compare the contents of a provisional application with a later-filed nonprovisional application for security review purposes. If applicant obtains a new license on a later-filed application, applicant needs to make a determination of which license controls. That is, if the subject matter of the nonprovisional application does not change the general nature of the invention of the provisional application such that it would have been made available to a defense agency, then the license date of the provisional application would control. In the instance described above, the latter license would control if the documents were not identical because an implied license is under the provisions of 37 CFR 5.15(b). 37 CFR 5.15(b) does not allow for additional subject matter beyond what was originally submitted.
- I filed a petition for an expedited license under 37 CFR 5.13 for material not disclosed in any U.S. patent application and received the license. The document I filed was assigned a “P” control number. I subsequently filed a U.S. patent application disclosing the same material and received a new license. Why wasn’t my expedited license applied to my later-filed U.S. application?
Petitions for expedited license filed without a corresponding U.S. application are assigned control numbers - the letter “P” followed by a 5 digit number. These petitions are processed and then stored. When the applicant files a subsequent U.S. patent application, the L&R security screener has no way of determining whether or not a previous petition was filed or whether or not the subject matter is identical. At this time, all petitions for license are treated separately and distinct from any other previous or subsequent petition.
- If a petition for expedited license is filed without a corresponding U.S. application, how much information should be submitted in the copy of the material required by 37 CFR 5.13? Will an invention summary suffice?
L&R will process what it receives. Applicants must be aware of the license scope that will be afforded by the license, if granted. See 37 CFR 5.15(a) and (b). It is strongly suggested that applicant submit a document that is as closely related as possible to what will be included in the foreign filing. Also, submissions must be in the English language.
- When I receive a license, what does it cover?
See 37 CFR 5.15(a) and 5.15(b) for the various license scopes. Applicant is reminded that a license only covers a filing in a foreign country and activities related to such filing. A license from the USPTO does not cover sending information abroad for the preparation of a filing in the U.S.
- Can applicant file papers on an application under secrecy order via EFS-Web?
No, applicant must file papers directly with Licensing and Review in accordance with the terms of the secrecy order.
- Can applicant file a paper on an application under secrecy order if the paper does not disclose the subject invention, such as a change of correspondence address?
No, applicant must file all papers directly with Licensing and Review in accordance with the terms of the secrecy order.
- Will Licensing and Review assist me in determining whether or not a license is required in my specific instance?
It is not the role of Licensing and Review to determine the need for a license. Rather, the need for a license is a legal decision that lies with the applicant.
- I noticed that my application has been “REFERRED BY L&R FOR THIRD-LEVEL SECURITY REVIEW”. What does that mean?
35 USC 181 requires the USPTO to refer any application which it deems the publication of which may be detrimental to national security to an appropriate defense agency for review. If that defense agency makes a positive determination that publication (or export in the form of or which may take the form of a patent application) would be detrimental to national security, that agency would recommend that the application be subject to a secrecy order. If a secrecy order is issued on an application, separate letters to each inventor and the attorney or agent of record will be mailed notifying them of such.
- How long should the THIRD-LEVEL SECURITY REVIEW take?
Although publication of the application will not occur until this determination has been completed, 35 USC 184 grants an implicit foreign filing license at 6 months from the filing of the application in the U.S. Therefore, the defense agencies strive to complete this processing within 6 months. However, given the large number of cases forwarded to them, this process often takes longer. Applicant wishing to make inquiries on the timeliness of this process should send an email to DTSAPATENTREVIEW@DTSA.MIL. The USPTO has very limited authority to terminate any security review.