27 - Petition for retroactive foreign filing license

Deciding Office:  Office of Petitions

The criteria for petition for retroactive foreign filing license are set forth in 37 CFR 5.25 and MPEP § 140

In general, these are the steps for filing a petition for retroactive foreign filing license:

  • A retroactive license may be sought if an unlicensed foreign filing has occurred through error. However, the requirements of 37 CFR 5.25 must be fulfilled in order for such a petition to be granted. 37 CFR 5.25  provides that:

(a) A petition for retroactive license under 35 U.S.C. 184  shall be presented in accordance with § 5.13  or § 5.14(a), and shall include:

(1) A listing of each of the foreign countries in which the unlicensed patent application material was filed,

(2) The dates on which the material was filed in each country,

(3) A verified statement (oath or declaration) containing:

(i) An averment that the subject matter in question was not under a secrecy order at the time it was filed aboard[sic], and that it is not currently under a secrecy order,

(ii) A showing that the license has been diligently sought after discovery of the proscribed foreign filing, and

(iii) An explanation of why the material was filed abroad through error without the required license under § 5.11  first having been obtained, and

(4) The required fee (§ 1.17(g)  of this chapter.

(b) The explanation in paragraph (a) of this section must include a showing of facts rather than a mere allegation of action through error. The showing of facts as to the nature of the error should include statements by those persons 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 acts which are alleged to constitute error should cover the period leading up to and including each of the proscribed foreign filings. 

(c) If a petition for a retroactive license is denied, a time period of not less than thirty days shall be set, during which the petition may be renewed. Failure to renew the petition within the set time period will result in a final denial of the petition. A final denial of a petition stands unless a petition is filed under § 1.181  within two months of the date of the denial. If the petition for a retroactive license is denied with respect to the invention of a pending application and no petition under § 1.181 has been filed, a final rejection of the application under 35 U.S.C. 185  will be made.

  • 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 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, or hand-delivered.  It may be filed through EFS-Web in a pending application .

Initial petition filed by 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, or exporting to, a foreign country an application on an invention made in the United States or technical data relating thereto;
  • 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).

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The Federal Register is the authoritative source and should be consulted if a need arises to verify the authenticity of the language for any CFR citation.  Because fee schedule changes may not be reflected in the most recent version of the MPEP, please consult the USPTO Fee Schedule to determine current fee amounts.