[Pct] security review delays (was Re: USPTO - Slower than usual)
Krista Jacobsen
krista at jacobseniplaw.com
Tue Feb 13 13:03:31 EST 2024
Timothy wrote:
"There is a mechanism under *Rule *22 to transmit it directly to the IB –
but I've been told that WIPO and USPTO have an informal agreement that they
won't trigger that process with each other.
My experience has been that the USPTO will send you a notification of IA
number, but won't send it to WIPO – so WIPO doesn't know the application
exists. However, it seems like after 6 months, you could send WIPO that
notification and possibly make use of Article 22 – I haven't tried it. It
seems like the worst thing that happens is you miss ISR/WO & Chapter II
Demand. You could then still transmit to DOs by 30 months, and trigger *Article
*22, which is referenced by *Rule *22.g"
Thank you for this -- I was not aware of it as a possible option, but I
might be in a position to need it. I had two PCT applications in the same
general technology area get tagged for review in July 2023. One has been
dislodged and forwarded to WIPO, but the other one remains stuck. The PCT
Help Desk person I spoke to last week is trying to work his magic, but if
he hasn't been able to move it by the end of this month, I'll investigate
whether/how I might be able to use Article 22.
Thank you, Timothy! (Love the helpful people on this list!)
------------------------------------------
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 9:25 AM Timothy Snowden via Pct <
pct at oppedahl-lists.com> wrote:
> Thanks for the markup! For some reason last time I read it I thought there
> was essentially a 'gotcha' in that you were clear of the FFL, but you
> didn't have any express authorization to file. 37 CFR 5.11 (c) seems to
> address that concern if I'm reading it right. Probably my reading was
> skewed because the L&R SPE warned that you might could get in trouble
> (somehow?) if you had transmitted it and then got a secrecy order slapped
> on the application. I don't see how, but the client didn't want to buck it
> and was OK with waiting.
>
> There is a mechanism under *Rule *22 to transmit it directly to the IB –
> but I've been told that WIPO and USPTO have an informal agreement that they
> won't trigger that process with each other.
> My experience has been that the USPTO will send you a notification of IA
> number, but won't send it to WIPO – so WIPO doesn't know the application
> exists. However, it seems like after 6 months, you could send WIPO that
> notification and possibly make use of Article 22 – I haven't tried it. It
> seems like the worst thing that happens is you miss ISR/WO & Chapter II
> Demand. You could then still transmit to DOs by 30 months, and trigger *Article
> *22, which is referenced by *Rule *22.g
>
> What I'm not sure is if there are any DOs that are going to hold the
> application invalid if it is not timely published – I'm not aware of any,
> and I know that publication doesn't happen *exactly* by 18 months.
>
> Not sure if those random thoughts are helpful, but I thought I'd throw
> them out there in case...
> ------------------------------
> *From:* Krista Jacobsen <krista at jacobseniplaw.com>
> *Sent:* Tuesday, February 13, 2024 9:42 AM
> *To:* For users of the PCT and ePCT. This is not for laypersons to seek
> legal advice. <pct at oppedahl-lists.com>
> *Cc:* Timothy Snowden <Timothy at thompsonpatentlaw.com>
> *Subject:* Re: [Pct] security review delays (was Re: USPTO - Slower than
> usual)
>
> 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.
>
>
> --
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>
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