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the petition as to the nature of the invention.

(b) Two or more United States applications should not be referred to in the same petition for license unless they are to be combined in the foreign or international application, in which event the petition should so state and the identification of each United States application should be in separate paragraphs.

(c) When the application to be filed or exported abroad contains matter not disclosed in the United States application or applications, including the case where the combining of two or more United States applications introduces subject matter not disclosed in any of them, a copy of the application as it is to be filed in the foreign country or international application which is to be transmitted to a foreign international or national agency for filing in the Receiving Office, must be furnished with the petition. If however, all new matter in the foreign or international application to be filed is readily identifiable, the new matter may be submitted in detail and the remainder by reference to the pertinent United States application or applications.

(Pub. L. 94-131, 89 Stat. 685)

[43 FR 20471, May 11, 1978, as amended at 49 FR 13462, Apr. 4, 1984]

85.15 Scope of license.

(a) Applications or other materials reviewed pursuant to §§5.12 through 5.14, which were not required to be made available for inspection by defense agencies under 35 U.S.C. 181 and §5.1, will be eligible for a license of the scope provided in this paragraph. This license permits subsequent modifications, amendments, and supplements containing additional subject matter to, or divisions of, a foreign patent application, if such changes to the application do not alter the general nature of the invention in a manner which would require the United States application to have been made available for inspection under 35 U.S.C. 181 and §5.1. This license also covers the inventions disclosed in foreign applications which had been granted a license under this part prior to April 4, 1984, and which were not subject to security inspection under 35 U.S.C. 181 and §5.1. Grant of

this license authorizes the export and filing of an application in a foreign country or the transmitting of an international application to any foreign patent agency or international patent agency when the subject matter of the foreign or international application corresponds to that of the domestic application. This license includes authority:

(1) To export and file all duplicate and formal application papers in foreign countries or with international agencies;

(2) To make amendments, modifications, and supplements, including divisions, changes or supporting matter consisting of the illustration, exemplification, comparison, or explanation of subject matter disclosed in the application; and

(3) To take any action in the prosecution of the foreign or international application provided that the adding of subject matter or taking of any action under paragraphs (a) (1) and (2) of this section does not change the general nature of the invention disclosed in the application in a manner which would require such application to have been made available for inspection under 35 U.S.C. 181 and §5.1 by including technical data pertaining to:

(i) Defense services or articles designated in the United States Munitions List applicable at the time of foreign filing, the unlicensed exportation of which is prohibited pursuant to the Arms Export Control Act, as amended, and 22 CFR parts 121 through 130; or

(ii) Restricted Data, sensitive nuclear technology or technology useful in the production or utilization of special nuclear material or atomic energy, the dissemination of which is subject to restrictions of the Atomic Energy Act of 1954, as amended, and the Nuclear NonProliferation Act of 1978, as implemented by the regulations for Unclassified Activities in Foreign Atomic Energy Programs, 10 CFR part 810, in effect at the time of foreign filing.

(b) Applications or other materials which were required to be made available for inspection under 35 U.S.C. 181 and §5.1 will be eligible for a license of the scope provided in this paragraph. Grant of this license authorizes the export and filing of an application in a

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foreign country or the transmitting of an international application to any foreign patent agency of international patent agency. Further, this license includes authority to export and file all duplicate and formal papers in foreign countries or with foreign and international patent agencies and to make amendments, modifications, and supplements to, file divisions of, and take any action in the prosecution of the foreign or international application, provided subject matter additional to that covered by the license is not involved.

(c) A license granted under §5.12(b) pursuant to §5.13 or §5.14 shall have the scope indicated in paragraph (a) of this section, if it is so specified in the license. A petition, accompanied by the required fee (§1.17(h)), may also be filed to change a license having the scope indicated in paragraph (b) of this section to a license having the scope indicated in paragraph (a) of this section. No such petition will be granted if the copy of the material filed pursuant to §5.13 or any corresponding United States application was required to be made available for inspection under 35 U.S.C. 181 and §5.1. The change in the scope of a license will be effective as of the date of the grant of the petition.

(d) In those cases in which no license is required to file the foreign application or transmit the international application, no license is required to file papers in connection with the prosecution of the foreign or international application not involving the disclosure of additional subject matter.

(e) Any paper filed abroad or transmitted to an international patent agency following the filing of a foreign or international application which changes the general nature of the subject matter disclosed at the time of filing in a manner which would require such application to have been made available for inspection under 35 U.S.C. 181 and §5.1 or which involves the disclosure of subject matter listed in paragraphs (a)(3) (i) or (ii) of this section must be separately licensed in the same manner as a foreign or international application. Further, if no license has been granted under §5.12(a) on filing the corresponding United States application, any paper filed

abroad or with an international patent agency which involves the disclosure of additional subject matter must be licensed in the same manner as a foreign or international application.

(f) Licenses separately granted in connection with two or more United States applications may be exercised by combining or dividing the disclosures, as desired, provided:

(1) Subject matter which changes the general nature of the subject matter disclosed at the time of filing or which involves subject matter listed in paragraph (a)(3) (i) or (ii) of this section is not introduced, and

(2) In the case where at least one of the licenses was obtained under §5.12(b), additional subject matter is not introduced.

(g) A license does not apply to acts done before the license was granted. See $5.25 for petitions for retroactive licenses.

[49 FR 13462, Apr. 4, 1984, as amended at 56 FR 1928, Jan. 18, 1991]

85.16 Effect of secrecy order.

Any license obtained under 35 U.S.C. 184 is ineffective if the subject matter is under a secrecy order, and a secrecy order prohibits the exercise of or any further action under the license unless separately specifically authorized by a modification of the secrecy order in accordance with §5.5.

§5.17 Who may use license.

Licenses may be used by anyone interested in the export, foreign filing, or international transmittal for or on behalf of the inventor or the inventor's assigns.

[49 FR 13463, Apr. 4, 1984]

§5.18 Arms, ammunition, and implements of war.

(a) The exportation of technical data relating to arms, ammunition, and implements of war generally is subject to the International Traffic in Arms Regulations of the Department of State (22 CFR parts 121 through 128); the articles designated as arms, ammunition, and implements of war are enumerated in the U.S. Munitions List, 22 CFR 121.01. However, if a patent applicant complies with regulations issued by the

Commissioner of Patents and Trademarks under 35 U.S.C. 184, no separate approval from the Department of State is required unless the applicant seeks to export technical data exceeding that used to support a patent application in a foreign country. This exemption from Department of State regulations is applicable regardless of whether a license from the Commissioner is required by the provisions of §§ 5.11 and 5.15 (22 CFR 125.04(b), 125.20(b)).

(b) When a patent application containing subject matter on the Munitions List (22 CFR 121.01) is subject to a secrecy order under §5.2 and a petition is made under §5.5 for a modification of the secrecy order to permit filing abroad, a separate request to the Department of State for authority to export classified information is not required (22 CFR 125.05(d)).

[35 FR 6430, Apr. 22, 1970]

§5.19 Export of technical data.

(a) Under regulations (15 CFR 770.10(j)) established by the U.S. Department of Commerce, Bureau of Export Administration, Office of Export Licensing, a validated export license is not required in any case to file a patent application or part thereof in a foreign country if the foreign filing is in accordance with the regulations (37 CFR 5.11 through 5.33) of the Patent and Trademark Office.

(b) A validated export license is not required for data contained in a patent application prepared wholly from foreign-origin technical data where such application is being sent to the foreign inventor to be executed and returned to the United States for subsequent filing in the U.S. Patent and Trademark Office (15 CFR 379.3(c)).

(c) Inquiries concerning the export control regulations for the foreign filing of technical data other than patent applications should be made to the Office of Export Administration, International Trade Administration, Department of Commerce, Washington, DC 20230.

[45 FR 72654, Nov. 3, 1980, as amended at 58 FR 54511, Oct. 22, 1993]

$5.20 Export of technical data relating to sensitive nuclear technology.

(a) Under regulations (10 CFR 810.7) established by the United States Department of Energy, an application filed in accordance with the regulations (37 CFR 5.11 through 5.33) of the United States Patent and Trademark Office and eligible for foreign filing under 35 U.S.C. 184, is considered to be information available to the public in published form and a generally authorized activity for the purposes of the Department of Energy regulations.

(b) Inquiries concerning the export of sensitive nuclear technology other than related to the filing or prosecution of a foreign patent application should be made to the Attention: Secretary, United States Department of Energy, Office of International Security Affairs, Washington, D.C. 20858. [49 FR 13463, Apr. 4, 1984]

$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 §5.13 or §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 §5.11 first having been obtained, and

(4) The required fee (§1.17(h)).

The above explanation 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.

(b) 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 §1.181 within two months of 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 §1.181 has been filed, a final rejection of the application under 35 U.S.C. 185 will be made.

(c) The granting of a retroactive license does not excuse any violation of the export regulations contained in 22 CFR parts 121 through 130 (International Traffic in Arms Regulations of the Department of State), 15 CFR part 379 (Regulations of Office of Export Administration, International Trade Administration, Department of Commerce) and 10 CFR part 810 (Foreign Atomic Energy Programs of the Department of Energy) which may have occurred because of the failure to obtain an appropriate license prior to export.

[49 FR 13463, Apr. 4, 1984, as amended at 56 FR 1929, Jan. 18, 1991]

GENERAL

§ 5.31 Effect of modification, rescission or license.

Any consent, rescission or license under the provisions of this part does not lessen the responsibilities of the principals in respect to any Government contract or the requirements of any other Government agency.

[24 FR 10381, Dec. 22, 1959. Redesignated at 49 FR 13463, Apr. 4, 1984]

§ 5.32 Papers in English language.

All papers submitted in connection with petitions must be in the English language, or be accompanied by an

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$7.1 Requirements.

(a) Executive Order 9424 (3 CFR 19431948 Comp.) requires the several departments and other executive agencies of the Government, including Government-owned or Government-controlled corporations, to forward promptly to the Commissioner of Patents and Trademarks for recording all licenses, assignments, or other interests of the Government in or under patents or applications for patents.

(b) An instrument relating to a patent must identify the patent by the patent number. An instrument relating to a national patent application must identify the national patent application by the application number (consisting of the series code and the serial

number, e.g., 07/123,456) or the serial number and filing date. An instrument relating to an international patent application which designates the United States of America must identify the international applications by the international application number (e.g., PCT/ US90/01234). If an assignment is executed concurrently with, or subsequent to, the execution of the patent application, but before the patent application is filed, it must identify the patent application by its date of execution, name of each inventor, and title of the invention so that there can be no mistake as to the patent application intended.

(c) Each instrument submitted to the Office for recording must be accompanied by at least one cover sheet as specified in paragraph (d) of this section referring to those patent applications and patents against which the instrument is to be recorded. Only one set of instruments and cover sheets to be recorded should be filed. If an instrument to be recorded is not accompanied by a completed cover sheet, the instrument and any incomplete cover sheet will be returned for proper completion of a cover sheet and resubmission of the instrument and a completed cover sheet.

(d) Each cover sheet required by paragraph (c) of this section must contain:

(1) The name of the party conveying the interest;

(2) The name and address of the party receiving the interest;

(3) A description of the interest conveyed or transaction to be recorded;

(4) Each application number or patent number against which the instrument is to be recorded, or an indication that the instrument is filed together with a patent application;

(5) The name and address of the party to whom correspondence concerning the request to record the instrument should be mailed;

(6) The number of applications or patents identified in the cover sheet and the total fee;

(7) The date the instrument was executed;

(8) A statement by the party submitting the instrument that to the best of the person's knowledge and belief, the

information contained on the cover sheet is true and correct and any copy submitted is a true copy of the original instrument; and

(9) The signature of the party submitting the instrument.

(e) Each patent cover sheet required by paragraph (c) of this section seeking to record a governmental interest as provided by paragraph (a) of this section must:

(1) Indicate that the instrument is to be recorded on the governmental register, and, if applicable, that the instrument is to be recorded on the Secret Register. See §7.7.

(2) Indicate, if applicable, that the instrument to be recorded is not an instrument affecting title. See paragraph (j) of this section.

(f) An error in a cover sheet recorded pursuant to this Part will be corrected only if:

(1) The error is apparent when the cover sheet is compared with the recorded instrument to which it pertains, and

(2) A corrected cover sheet accompanied by the recording fee set forth in paragraph (i) of this section and either the original recorded instrument or a copy of the original recorded instrument is filed for recordation.

(g) The Office will accept and record non-English language instruments only if accompanied by a verified English translation signed by the individual making the translation.

(h) Instruments and cover sheets to be recorded should be addressed to the Commissioner of Patents and Trademarks, Box Assignment, Washington, D.C. 20231.

(i) All requests to record instruments must be accompanied by the appropriate fee. Except as provided in paragraph (j) of this section, a recording fee set forth in §1.21(h) of this chapter fee is required for each application and patent against which the instrument is recorded as identified in the cover sheet.

(j) No fee is required for each patent application and patent against which an instrument required by Executive Order 9424 (3 CFR 1943–1948 Comp.) to be filed if:

(1) The instrument does not affect title and is so identified in the cover

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