[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: 37CFR5.25]

[Page 212-213]
 
              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. 5.25  Petition for retroactive license.

    (a) A petition for a retroactive license under 35 U.S.C. 184 shall 
be presented in accordance with Sec. 5.13 or Sec. 5.14(a), and shall 
include:
    (1) A listing of each of the foreign countries in which the 
unlicensed patent application material was filed,
    (2) The dates on which the material was filed in each country,
    (3) A verified statement (oath or declaration) containing:
    (i) An averment that the subject matter in question was not under a 
secrecy order at the time it was filed aboard, and that it is not 
currently under a secrecy order,
    (ii) A showing that the license has been diligently sought after 
discovery of the proscribed foreign filing, and
    (iii) An explanation of why the material was filed abroad through 
error and without deceptive intent without the required license under 
Sec. 5.11 first having been obtained, and
    (4) The required fee (Sec. 1.17(g) of this chapter).
    (b) The explanation in paragraph (a) of this section must include a 
showing of facts rather than a mere allegation of action through error 
and without deceptive intent. The showing of facts as to the nature of 
the error should include statements by those persons having personal 
knowledge of the acts regarding filing in a foreign country and should 
be accompanied by copies of any necessary supporting documents such as 
letters of transmittal or instructions for filing. The acts which are 
alleged to constitute error without deceptive intent should cover the 
period leading up to and including each of the proscribed foreign 
filings.
    (c) If a petition for a retroactive license is denied, a time period 
of not less than thirty days shall be set, during which the petition may 
be renewed. Failure to renew the petition within the set time period 
will result in a final denial of the petition. A final denial of a 
petition stands unless a petition is filed under Sec. 1.181 within two 
months of

[[Page 213]]

the date of the denial. If the petition for a retroactive license is 
denied with respect to the invention of a pending application and no 
petition under Sec. 1.181 has been filed, a final rejection of the 
application under 35 U.S.C. 185 will be made.

[49 FR 13463, Apr. 4, 1984, as amended at 56 FR 1929, Jan. 18, 1991; 62 
FR 53206, Oct. 10, 1997; 69 FR 56546, Sept. 21, 2004]

                                 General