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27 – Petition for Retroactive Foreign Filing License

Deciding Office: The Office of Petitions

The criteria for Petition for Retroactive Foreign Filing License are set forth in 37 CFR 5.25, MPEP § 140

In general, these are the steps to follow for filing a Petition for Retroactive Foreign Filing License:

  • A retroactive license may be sought if an unlicensed foreign filing has occurred through error and without deceptive intent. However, the requirements of  37 CFR 5.25 must be fulfilled in order for such a petition to be granted. Note that 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. The showing of facts as to the nature of the error should include verified statements by all those persons responsible for or 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 verified statement must include the clause: 

"I hereby declare that all statements made herein are of my own knowledge are true and that all statements made on information and belief are believed to be true; and further that these statements were made with the knowledge that willful false statements and the like so made are punishable by fine or imprisonment, or both, under Section 1001 of Title 18 of the United States Code and that such willful false statements may jeopardize the validity of the application or any patent issuing thereon."

  • A petition for a Retroactive foreign filing license for material not related to any pending application (37 CFR 5.13) must also be accompanied by a translated copy of the material filed abroad without the benefit a foreign filing license.

Fees:

  • For fees due, please consult the Current USPTO Fee Schedule on the Fee Information Page for codes 1463/2463/3463 (Large Entity/Small Entity/Micro Entity) under the Patent Petition Fees.

How to File:

  • A petition for a retroactive 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 through 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.

For the relevant patent laws and rules applicable to Petition for Retroactive Foreign Filing License, please see:

  • 37 CFR 5.11, License for filing in a foreign country an application on an invention made in the United States or for transmitting international application;
  • 37 CFR 5.12, Petition for License;
  • 37 CFR 5.13, Petition for License; no corresponding application;
  • 37 CFR 5.14, Petition for License; corresponding U.S. application;
  • 37 CFR 5.15, Scope of License;
  • 37 CFR 5.25, Petition for Retroactive License; and
  • MPEP § 140, Foreign Filing Licenses

Forms:

No form available.  Submit a signed request that includes information listed in Requirements of a Petition.


For further assistance, please contact the Petitions Help Desk between 8:30 AM - 5 PM (EDT).

United States Patent and Trademark Office
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Last Modified: 10/23/2013 12:09:28 PM