[Code of Federal Regulations]
[Title 37, Volume 1]
[Revised as of July 1, 2008]
From the U.S. Government Printing Office via GPO Access
[CITE: 37CFR5.11]

[Page 208-209]
 
              TITLE 37--PATENTS, TRADEMARKS, AND COPYRIGHTS
 
  CHAPTER I--UNITED STATES PATENT AND TRADEMARK OFFICE, DEPARTMENT OF 
                                COMMERCE
 
PART 5_SECRECY OF CERTAIN INVENTIONS AND LICENSES TO EXPORT AND FILE APPLICATIONS IN FOREIGN COUNTRIES--Table of Contents
 
Sec. 5.11  License for filing in a foreign country an application on an invention made in the United States or for transmitting an international application.

    (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 patent office or any foreign patent agency or any 
international agency other than the United States Receiving Office, if 
the invention was made in the United States and:
    (1) An application on the invention has been on file 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.
    (b) The license from the Commissioner for Patents referred to in 
paragraph (a) would also authorize the export of technical data abroad 
for purposes relating to the preparation, filing

[[Page 209]]

or possible filing and prosecution of a foreign patent application 
without separately complying with the regulations contained in 22 CFR 
parts 121 through 130 (International Traffic in Arms Regulations of the 
Department of State), 15 CFR parts 730-774 (Regulations of the Bureau of 
Industry and Security, Department of Commerce) and 10 CFR part 810 
(Foreign Atomic Energy Programs of the Department of Energy).
    (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 patent 
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 730-774 (Bureau of Industry and 
Security Regulations, 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 Sec. 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.
    (d) If a secrecy order has been issued under Sec. 5.2, an 
application cannot be exported to, or filed in, a foreign country 
(including an international agency in a foreign country), except in 
accordance with Sec. 5.5.
    (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 Sec. 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 
patent application if:
    (i) A license is not, or was not, required under paragraph (e)(2) of 
this section for the foreign patent 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 Patent and 
Trademark Office. An authorization to file a foreign patent 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.

[49 FR 13461, Apr. 4, 1984, as amended at 56 FR 1928, Jan. 18, 1991; 62 
FR 53204, Oct. 10, 1997; 70 FR 56129, Sept. 26, 2005]