<div dir="ltr"><div>I agree the delays are not being caused by the USPTO. I noticed an uptick in national security review delays after Russia invaded Ukraine. I think they must have added some keywords to the filter that routes applications to national security review, because I have clients in a couple of technology areas that were never flagged before but are flagged every time now.<br></div><div><br></div><div>In any event, my understanding is that after filing in the U.S., the agencies only have 6 months to impose a secrecy order, and if they do not, you are free to file in foreign jurisdiction (emphases added):<br></div><div><br></div><div>"35 U.S.C. 184 Filing of application in foreign country.<br><br> (a) FILING IN FOREIGN COUNTRY.—<u>Except when authorized by a license</u> obtained from the Commissioner of Patents <u>a person shall not file or cause or authorize to be filed in any foreign country prior to six months after filing in the United States an application for patent</u> or for the registration of a utility model, industrial design, or model in respect of an invention made in this country. . . ."</div><div><br></div><div>"37 CFR 5.11 License for filing in, or exporting to, a foreign country an application on an invention made in the United States or technical data relating thereto.<br><br> (a) <u>A license from the Commissioner for Patents under 35 U.S.C. 184 is required</u> before filing any application for patent including any modifications, amendments, or supplements thereto or divisions thereof or for the registration of a utility model, industrial design, or model, in a foreign country or in a foreign or international intellectual property authority (other than the United States Patent and Trademark Office acting as a Receiving Office for international applications (35 U.S.C. 361, 37 CFR 1.412) or as an office of indirect filing for international design applications (35 U.S.C. 382, 37 CFR 1.1002)), <u>if the invention was made in the United States, and</u>:<br> (1) <u>An application on the invention has been filed in the United States less than six months prior to the date on which the application is to be filed</u>; or<br> (2) No application on the invention has been filed in the United States.<br> * * *<br> (c) Where technical data in the form of a patent application, or in any form, are being exported for purposes related to the preparation, filing or possible filing and prosecution of a foreign application, without the license from the Commissioner for Patents referred to in paragraphs (a) or (b) of this section, or on an invention not made in the United States, the export regulations contained in 22 CFR parts 120 through 130 (International Traffic in Arms Regulations of the Department of State), 15 CFR parts 730 through 774 (Export Administration Regulations of the Bureau of Industry and Security, Department of Commerce) and 10 CFR part 810 (Assistance to Foreign Atomic Energy Activities Regulations of the Department of Energy) must be complied with <u>unless a license is not required because a United States application was on file at the time of export for at least six months without a secrecy order under § 5.2 being placed thereon</u>. The term “exported” means export as it is defined in 22 CFR part 120, 15 CFR part 734 and activities covered by 10 CFR part 810.<br> * * *<br> (e) <u>No license pursuant to paragraph (a) of this section is required:</u><br> (1) If the invention was not made in the United States, or<br> (2) <u>If the corresponding United States application is not subject to a secrecy order under § 5.2, and was filed at least six months prior to the date on which the application is filed in a foreign country</u>, or<br> (3) For subsequent modifications, amendments and supplements containing additional subject matter to, or divisions of, a foreign application if:<br> (i) A license is not, or was not, required under paragraph (e)(2) of this section for the foreign application;<br> (ii) The corresponding United States application was not required to be made available for inspection under 35 U.S.C. 181; and<br> (iii) Such modifications, amendments, and supplements do not, or did not, change the general nature of the invention in a manner which would require any corresponding United States application to be or have been available for inspection under 35 U.S.C. 181.<br> (f) A license pursuant to paragraph (a) of this section can be revoked at any time upon written notification by the United States Patent and Trademark Office. <u>An authorization to file a foreign application resulting from the passage of six months from the date of filing of a United States patent application may be revoked by the imposition of a secrecy order</u>. . . ."<br></div><div><br></div><div>Thus, you do not need a FFL at all if 6 months pass after filing in the U.S. and no secrecy order has been imposed during that 6 months. It is (annoyingly) possible that a secrecy order will subsequently be imposed, but if that happens, at least the applicant won't be penalized for having filed without a FFL.<br></div><div><br></div><div>That doesn't help with PCT applications stuck in RO/US, of course, but I have found that if I call the PCT Help Desk at the 6-month mark, they are pretty good at getting applications dislodged.<br></div><div><br></div><div>Best regards,</div><div>Krista</div><div><br></div><div><div><div dir="ltr" class="gmail_signature" data-smartmail="gmail_signature"><div dir="ltr"><div><div dir="ltr"><div></div><div>------------------------------------------<br></div><div>Krista S. Jacobsen<br></div><div>Attorney and Counselor at Law</div><div>Jacobsen IP Law</div><div><a href="mailto:krista@jacobseniplaw.com" target="_blank">krista@jacobseniplaw.com</a></div><div>T: 408.455.5539</div><div><a href="http://www.jacobseniplaw.com" target="_blank">www.jacobseniplaw.com</a></div></div></div></div></div></div><br></div></div><br><div class="gmail_quote"><div dir="ltr" class="gmail_attr">On Tue, Feb 13, 2024 at 6:58 AM Timothy Snowden via Pct <<a href="mailto:pct@oppedahl-lists.com">pct@oppedahl-lists.com</a>> wrote:<br></div><blockquote class="gmail_quote" style="margin:0px 0px 0px 0.8ex;border-left:1px solid rgb(204,204,204);padding-left:1ex"><div class="msg9156916766118164138">
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<span style="font-family:Calibri,sans-serif">I have to say that with this particular issue, I don't think it's the USPTO – there appears to be a backlog in the reviewing institutions. I dealt with one recently that took well over 6 months to get shaken loose,
and the USPTO people were very helpful when I called them. Start with Licensing & Review, and then get to the SPE. They can bump the reviewing agency.</span></div>
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<span style="font-family:Calibri,sans-serif">There is a 6 month provision after which you may have the right to transmit without FFL ... but my understanding is that you then take on the liability to determine it's not national-security technology ...</span></div>
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<span style="font-family:Calibri,sans-serif">PCT publishing etc may be behind, and you may lose the benefit of timely ISR/WO and/or the ability to pursue a Chapter II Demand (if desired), but as long as they get it out by 30 months there shouldn't be a problem
with national phase.</span></div>
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<div id="m_179811593726291971divRplyFwdMsg" dir="ltr"><font face="Calibri, sans-serif" style="font-size:11pt" color="#000000"><b>From:</b> Pct <<a href="mailto:pct-bounces@oppedahl-lists.com" target="_blank">pct-bounces@oppedahl-lists.com</a>> on behalf of Carl Oppedahl via Pct <<a href="mailto:pct@oppedahl-lists.com" target="_blank">pct@oppedahl-lists.com</a>><br>
<b>Sent:</b> Monday, February 12, 2024 6:39 PM<br>
<b>To:</b> For users of the PCT and ePCT. This is not for laypersons to seek legal advice. <<a href="mailto:pct@oppedahl-lists.com" target="_blank">pct@oppedahl-lists.com</a>><br>
<b>Cc:</b> Carl Oppedahl <<a href="mailto:carl@oppedahl.com" target="_blank">carl@oppedahl.com</a>><br>
<b>Subject:</b> [Pct] security review delays (was Re: USPTO - Slower than usual)</font>
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<div>On 2/12/2024 5:29 PM, Wanda T. Kellar via Pct wrote:<br>
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<p><span style="font-size:14pt;color:black">What has gotten into the USPTO?</span></p>
[...]<span style="font-size:14pt;color:black"></span>
<p><span style="font-size:14pt;color:black"><span>4)<span style="font:7pt "Times New Roman"">
</span></span></span><span style="font-size:14pt;color:black">Several PCT applications filed, and 6 months later, they are still under secrecy review.</span></p>
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<p>This problem is largely within the practitioner's power to avoid. Simply file in RO/IB instead of RO/US.</p>
<p>First, if the invention was not made in the US, you don't need an FFL to satisfy US security requirements anyway, so file in RO/IB.</p>
<p>Even if the invention was made in the US, barring some surprise you already had an FFL in your US priority document. That FFL makes it okay to file in RO/IB (assuming that you did not add significant new matter).
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<p>Even if you added significant new matter, just plan ahead by a week or two, and file the text of the to-be-filed PCT as a US provisional, and likely as not you will seen an FFL in that filing receipt. If so, then that makes it okay to file in RO/IB. And
also gives you a potent rules-based-IBR benefit.</p>
<p>See session 14 at <a href="https://blog.oppedahl.com/the-2022-schwegman-advanced-pct-training/" target="_blank">
https://blog.oppedahl.com/the-2022-schwegman-advanced-pct-training/</a> . Free of charge.</p>
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