Petition for Foreign Filing License

Summary

This template may be used to petition the United States Patent and Trademark Office (USPTO) for a foreign filing license for a patent application. This template includes practical guidance and drafting notes. A U.S. patent application for an invention made in the U.S. implicitly includes a petition for a foreign filing license. See 37 C.F.R. § 5.12(a). If granted, the foreign filing license will be included in the USPTO's filing receipt for the patent application. However, if your client plans to file a foreign patent application before filing a U.S. application for the invention (or does not intend to file a patent application in the U.S.), your client must petition the USPTO for a foreign filing license under 37 C.F.R. § 5.12(b). Note that there is no need for a foreign filing license if the foreign patent application is not filed until six months after filing the corresponding U.S. application, as long as no secrecy order has been imposed. See 35 U.S.C. § 184, 37 C.F.R. § 5.11(e)(2). A petition for a foreign filing license may be required in the following circumstances: • When there is no corresponding U.S. application for the invention (see 37 C.F.R. § 5.13) • Even though a U.S. patent application has been filed, a U.S. filing receipt license is not granted • The U.S. filing receipt has not yet issued (see 37 C.F.R. § 5.14(a) and (b)) • The foreign application will include additional subject matter not covered by the existing foreign filing license (see 37 C.F.R. § 5.14(c) and 5.15(e)) – or – • Expedited issuance of the foreign filing license is required The petition may be filed by hand delivery to the USPTO, fax transmission to the USPTO's Licensing and Review branch, or electronically via the USPTO's Patent Center system. Note that filing by mail is not allowed. The USPTO encourages applicants to hand-deliver or fax the license petition directly to the Licensing and Review branch at 571-273-0185. See Manual of Patent Examining Procedure 140(I). If you are seeking an expedited license, you should hand-deliver or fax the petition. Applicants should also provide a contact number or fax number to which the license should be sent. Without this information, the license will be mailed to the requester, thereby delaying the receipt of the license. The scope of any foreign filing license that is granted is indicated on the license. If there is no national security concern, generally, the license will be granted. The license will usually issue within three business days from the petition's receipt by the USPTO's Licensing and Review branch. Note that the following items must accompany the petition: • A complete copy of the foreign patent application (with an English translation if the application is in a language other than English) • The required filing fee under 37 C.F.R. § 1.17(g) (the latest USPTO fee schedule can be found here) Each page of the petition should be numbered to ensure that every page has been properly filed and to facilitate reference to a particular page at a later date, if necessary. For additional information, see Foreign Filing License Checklist.