Requesting a Foreign Filing License

Filing for a foreign license can appear a daunting task.  Below is a brief summary when it comes to requesting an expedited or retroactive license.

If an invention is made in the United States, an expedited foreign filing license (FFL) is required when a foreign application is to be filed in situations with no corresponding US application or within six months of filing a corresponding US application¹.  No license is required when the corresponding US application was filed more than six months prior to the time of filing the foreign application.

Requesting an expedited FFL without a US application:

When submitting a request for an expedited foreign filing license with no corresponding US application, a copy of the application (specification and/or drawings), along with the petition transmittal, is to be submitted. In addition, a fee under 1.17(g) must be included with the request.

Requesting an expedited FFL within six months of a US application filing:

When submitting a request corresponding to a US application, the application documents need not be resubmitted to the License and Review Department.  Simply the petition, including the identifying application information (“application number, filing date, inventor, and title”²), and petition fee under 1.17(g) must be submitted.

Retroactive license:

It is also possible to file for a retroactive license.  This occurs in situations when a foreign application containing material relating to an invention made in United States is filed prior to obtaining a license to do so.

A retroactive license request must include the following³:

-List of foreign countries where relevant material was filed
-Date(s) when foreign application(s) was filed
-Statement
-Petition fee under 1.17(g)

In addition, the statement must include the following:

-confirmation that the relevant material does not pertain to a secrecy order
-confirmation that a license was diligently sought upon discovery that a license was needed (and that the foreign application was filed without intent to deceive)
-an explanation with supporting evidence as to why the relevant material was filed abroad without first obtaining a license

https://www.uspto.gov/web/offices/pac/mpep/s140.html
¹As indicated by 37 CFR 5.11
²As indicated by 37 CFR 5.14
³As indicated by 37 CFR 5.25