[Pct] security review delays (was Re: USPTO - Slower than usual)

[Timothy Snowden]

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.

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 ...

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.
________________________________
From: Pct <pct-bounces at oppedahl-lists.com> on behalf of Carl Oppedahl via Pct <pct at oppedahl-lists.com>
Sent: Monday, February 12, 2024 6:39 PM
To: For users of the PCT and ePCT. This is not for laypersons to seek legal advice. <pct at oppedahl-lists.com>
Cc: Carl Oppedahl <carl at oppedahl.com>
Subject: [Pct] security review delays (was Re: USPTO - Slower than usual)

On 2/12/2024 5:29 PM, Wanda T. Kellar via Pct wrote:

What has gotten into the USPTO?

[...]

4)     Several PCT applications filed, and 6 months later, they are still under secrecy review.

This problem is largely within the practitioner's power to avoid.  Simply file in RO/IB instead of RO/US.

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.

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).

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.

See session 14 at https://blog.oppedahl.com/the-2022-schwegman-advanced-pct-training/ .  Free of charge.

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