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Patent FAQ

What resources are available if I am encountering issues with protecting or enforcement my intellectual property rights abroad?

The rights granted by a U.S. patent extend only throughout the territory of the United States and have no effect in a foreign country. An inventor who wants patent protection in other countries must apply for a patent in each of the other countries or in regional patent offices. U.S. businesses and stakeholders who are encountering difficulties in protecting or enforcing intellectual property rights in a foreign country are encouraged to consult the IP Attaché pages of the USPTO website.

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Patent FAQ

What is a patent?

A patent for an invention is a grant of property rights by the U.S. Government through the U.S. Patent and Trademark Office. The patent grant excludes others from making, using, or selling the invention in the United States. A utility or plant patent in force on June 8, 1995, is subject to either the 17 year term from grant or the 20 year term from earliest effective U.S. filing date, whichever is longer. A design patent term is 14 years from patent grant. The right conferred by the patent grant extends throughout the United States. The terms “Patent Pending” and “Patent Applied For” are used to inform the public that an application for a patent has been filed. Patent protection does not start until the actual grant of a patent. Marking of an article as patented, when it is not, is illegal and subject to penalty.

A patent cannot be obtained on a mere idea or suggestion. Patent applications are examined for both technical and legal merit. Prior to filing a patent application, a search of existing patents can be conducted at the USPTO Patent Search Room or at a Patent and Trademark Depository Library in your area. For additional information on patents, you may visit the USPTO Web site at www.uspto.gov/main/patents.htm.

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Patent FAQ

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.

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Patent FAQ

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.

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Patent FAQ

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).
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Patent FAQ

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.

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Patent FAQ

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.

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Patent FAQ

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

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.

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Patent FAQ

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.

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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.