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Patent FAQ

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.

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Patent FAQ

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.

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Patent FAQ

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.

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Patent FAQ

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.

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Patent FAQ

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 disclo

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.

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Patent FAQ

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@MAIL.MIL. The USPTO has very limited authority to terminate any security review.

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Patent FAQ

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.

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Patent FAQ

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.

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Patent FAQ

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.

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Patent FAQ

What is a patent?

A patent is a property right granted by the Government of the United States of America to an inventor “to exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States” for a limited time in exchange for public disclosure of the invention when the patent is granted.