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85.8 Appeal to Secretary.

Appeal to the Secretary of Commerce, as provided by 35 U.S.C. 181, from a secrecy order cannot be taken until after a petition for rescission of the secrecy order has been made and denied. Appeal must be taken within 60 days from the date of the denial, and the party appealing, as well as the department or agency which caused the order to be issued will be notified of the time and place of hearing. The appeal will be heard and decided by the Secretary or such officer or officers as he may designate.

LICENSES FOR FOREIGN EXPORTING AND

FILING

8 5.11 License for filing in a foreign coun

try an application on an invention made in the United States or for trans

mitting an international application. (a) A license from the Commissioner of Patents and Trademarks under 35 U.S.C. 184 is required before filing any application for patent 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:

(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,

(c) Where technical data in the form of a patent application, or in any form, is 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 of Patents and Trademarks 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 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) 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 Parts 121 through 130, 15 CFR Part 379 and 10 CFR Part 810.

(d) If a secrecy order has been issued under $ 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 $ 5.5.

(e) No license pursuant to paragraph (a) of this section is required if:

(1) The invention was not made in the United States, or

(2) The 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.

(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)

or

(2) No application on the invention has been filed in the United States.

(b) The license from the Commissioner of Patents and Trademarks referred to in paragraph (a) would also authorize the export of technical data abroad for purposes related to the preparation, filing 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 Part 379 (Regulations of the Office of Export Administration, International Trade Administration, Department of Commerce) and 10 CFR Part 810 (Foreign Atomic Energy Programs of the Department of Energy).

$ 5.12 Petition for license.

(a) Filing of an application for patent for inventions made in the United States will be considered to include a petition for license under 35 U.S.C. 184 for the subject matter of the application. The filing receipt will indicate if a license is granted. If the initial automatic petition is not granted, a subsequent petition may be filed under paragraph (b) of this section.

(b) Petitions for license should be presented in letter form and must include the required fee ($ 1.17(h)), if expedited handling of the petition is also sought, the petitioner's address, and full instructions for delivery of the requested license when it is to be delivered to other than the petitioner. (35 U.S.C. 6, Pub. L. 97-247) [48 FR 2714, Jan. 20, 1983, as amended at 49 FR 13462, Apr. 4, 1984)

the disclosure of the United States application. Where the title is not descriptive, and the subject matter is clearly of no interest from a security standpoint, time may be saved by a short statement in 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 applicaticn 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, and 49 FR 13462, Apr. 4, 1984)

or

85.13 Petition for license; no correspond

ing application. If no corresponding national international application has been filed in the United States, the petition for license under $ 5.12(b) must be accompanied by the required fee (§ 1.17(h)), if expedited handling of the petition is also sought, and a legible copy of the material upon which a license is desired. This copy will be retained as a measure of the license granted. For assistance in the identification of the subject matter of each license so issued, it is suggested that the petition be submitted in duplicate and provide a title and other description of the material. The duplicate copy of the petition will be returned with the license or other action on the petition. [49 FR 13462, Apr. 4, 1984)

8 5.14 Petition for license; corresponding

U.S. application. (a) When there is a corresponding United States application on file, a petition for license under $ 5.12(b) must include the required fee ($ 1.17(h)), if expedited handling of the petition is also sought, and must identify this application by serial number, filing date, inventor, and title, but a copy of the material upon which the license is desired is not required. The subject matter licensed will be measured by

8 5.15 Scope of license.

(a) Grant of a license under $ 5.12(a) 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 papers to the foreign country or 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;

(3) To take any action in the prosecution of the foreign or international application; and

(4) To add subject matter or take any action under paragraphs (a) (1) through (3) of this section which does not change the general nature of the subject matter disclosed at the time of filing, unless the subject matter added involves 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 Non-Proliferation 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) Grant of a license under $ 5.12(b) 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. Further, this license includes authority to forward all duplicate and formal papers to the foreign patent agency or international patent agency and to make amendments, modifications or supplements to 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. The change in the scope

of a license will be as of the date of the grant of the change in scope.

(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 or which involves the disclosure of subject matter listed in paragraphs (a)(4) (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 paragraphs (a)(4) (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)

$ 5.16 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.

8 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)

eign filing is in accordance with the regulations (37 CFR 5.11 through 5.23) 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, D.C. 20230. (45 FR 72654, Nov. 3, 1980)

8 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)

8 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)

8 5.19 Export of technical data.

(a) Under regulations (15 CFR 370.10(j)) established by the U.S. Department of Commerce, International Trade Administration, Office of Export Administration, a validated export license is not required in any case to file a patent application or part thereof in a foreign country if the for

8 5.25 Petition for retroactive license.

(a) A petition of retroactive license under 35 U.S.C. 184 shall be presented in accordance with $ 5.13 or $ 5.14, and shall include:

(1) A listing of the foreign countries in which the patent application material was filed,

(2) The dates on which the material was filed,

obtain an appropriate license prior to export.

(49 FR 13463, Apr. 4, 1984)

GENERAL

8 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 English translation and a translator's certificate as to the true, faithful and exact character of the translation.

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

(3) A verified statement containing:

(i) An averment that the subject matter in question was not under a secrecy order at the time it was filed abroad, 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 inadvertently filed abroad 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 inadvertence. The showing of facts 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 inadvertence should cover the period from the time of filing until actual filing of the petition under this section.

(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

§ 5.33 Correspondence.

All correspondence in connection with this part, including petitions, should be addressed to “Commissioner of Patents and Trademarks (Attention Licensing and Review), Washington, D.C. 20231."

[49 FR 13463, Apr. 4, 1984)

PART 6-CLASSIFICATION OF GOODS AND SERVICES UNDER THE TRADEMARK ACT

EDITORIAL NOTE: Part 6 is placed in a separate grouping of parts pertaining to trademarks. It appears on page 212 of this volume.

PART 7-REGISTER OF GOVERNMENT

INTERESTS IN PATENTS

Sec. 7.1 Requirements. 7.2 Assignments. 7.3 Licenses. 7.4 Abbreviated copy. 7.5 Instruments already on record. 7.6 Access to register. 7.7 Secret register.

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