Petition for Retroactive Foreign Filing License

Summary

This template may be used to petition the United States Patent and Trademark Office (USPTO) for a retroactive 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 foreign filing license petition. 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, provided that no secrecy order has been imposed. See 35 U.S.C. § 184, 37 C.F.R. § 5.11(e)(2). This template addresses the situation where a foreign patent application for which a foreign filing license was required was filed without having first obtained the requisite license. The patent applicant must petition for a retroactive foreign filing license in these circumstances, explaining why the error occurred. Petitions for retroactive foreign filing licenses are made under 37 C.F.R. § 5.25. The degree of factual support required for a petition under 37 C.F.R. § 5.25 is high. You must explain in detail why the petition for a foreign filing license was not filed before the foreign patent application was filed. Preferably, you should attach any emails or other communications that help explain how the error occurred. Sometimes copies of privileged attorney-client communications must be filed to explain the error. Before filing privileged communications, remember that you must obtain your client's permission since only the client can waive this privilege. 37 C.F.R. § 5.25(b) provides as follows: "The explanation … 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." 37 C.F.R. § 5.25(a)(1) also requires that the petition identify each foreign country in which an unlicensed patent application was filed and the filing dates. This information can be included in the caption on the first page of the petition. 37 C.F.R. § 5.25(a)(3) further requires a verified statement (i.e., a signed and dated oath or declaration) containing the following: • An averment that the subject matter in question was not under a secrecy order at the time it was filed abroad and that it is not currently under a secrecy order • A showing that the license has been diligently sought after the discovery of the proscribed foreign application filing – and – • An explanation of why the application was filed abroad through error without the required license under 37 C.F.R. § 5.11 The latter two items are addressed in this petition template, allowing the verified statement to include a brief reference to the petition with an averment of its accuracy. Attach the verified statement to the petition as a separately-labeled paper. It should be signed and dated by the inventor(s) or an authorized representative of the applicant. The petition filing must be accompanied by the fee under 37 C.F.R. § 1.17(g). See here for the fee. For additional information on foreign filing licenses, see Foreign Filing License Checklist.