[Pct] security review delays (was Re: USPTO - Slower than usual)
Krista Jacobsen
krista at jacobseniplaw.com
Tue Feb 13 10:42:17 EST 2024
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.
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):
"35 U.S.C. 184 Filing of application in foreign country.
(a) FILING IN FOREIGN COUNTRY.—*Except when authorized by a license*
obtained from the Commissioner of Patents *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* or for the
registration of a utility model, industrial design, or model in respect of
an invention made in this country. . . ."
"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.
(a) *A license from the Commissioner for Patents under 35 U.S.C. 184 is
required* 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)), *if the invention was made in
the United States, and*:
(1) *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*; or
(2) No application on the invention has been filed in the United
States.
* * *
(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 *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*. 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.
* * *
(e) *No license pursuant to paragraph (a) of this section is required:*
(1) If the invention was not made in the United States, or
(2) *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*, or
(3) For subsequent modifications, amendments and supplements
containing additional subject matter to, or divisions of, a foreign
application if:
(i) A license is not, or was not, required under paragraph
(e)(2) of this section for the foreign application;
(ii) The corresponding United States application was not
required to be made available for inspection under 35 U.S.C. 181; and
(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.
(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. *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*. .
. ."
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.
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.
Best regards,
Krista
------------------------------------------
Krista S. Jacobsen
Attorney and Counselor at Law
Jacobsen IP Law
krista at jacobseniplaw.com
T: 408.455.5539
www.jacobseniplaw.com
On Tue, Feb 13, 2024 at 6:58 AM Timothy Snowden via Pct <
pct at oppedahl-lists.com> wrote:
> 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.
>
>
> --
> Pct mailing list
> Pct at oppedahl-lists.com
> http://oppedahl-lists.com/mailman/listinfo/pct_oppedahl-lists.com
>
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