Filing for a foreign license can appear a daunting task. Below is a brief summary when it comes to requesting an expedited or retroactive license.
If an invention is made in the United States, an expedited foreign filing license (FFL) is required when a foreign application is to be filed in situations with no corresponding US application or within six months of filing a corresponding US application1. No license is required when the corresponding US application was filed more than six months prior to the time of filing the foreign application.
Requesting an expedited FFL without a US application:
When submitting a request for an expedited foreign filing license with no corresponding US application, a copy of the application (specification and/or drawings), along with the petition transmittal, is to be submitted. In addition, a fee under 1.17(g) must be included with the request.
Requesting an expedited FFL within six months of a US application filing:
When submitting a request corresponding to a US application, the application documents need not be resubmitted to the License and Review Department. Simply the petition, including the identifying application information (“application number, filing date, inventor, and title”2), and petition fee under 1.17(g) must be submitted.
It is also possible to file for a retroactive license. This occurs in situations when a foreign application containing material relating to an invention made in United States is filed prior to obtaining a license to do so.
A retroactive license request must include the following3:
-List of foreign countries where relevant material was filed
-Date(s) when foreign application(s) was filed
-Petition fee under 1.17(g)
In addition, the statement must include the following:
-confirmation that the relevant material does not pertain to a secrecy order
-confirmation that a license was diligently sought upon discovery that a license was needed (and that the foreign application was filed without intent to deceive)
-an explanation with supporting evidence as to why the relevant material was filed abroad without first obtaining a license
1As indicated by 37 CFR 5.11
2As indicated by 37 CFR 5.14
3As indicated by 37 CFR 5.25