MPEP 1832 - License Request for Foreign Filing Under the PCT

Transcript

Okay, welcome back to the deep dive. We're uh continuing our exploration into the MP, the manual of patent examining procedure. Think of this as our ongoing educational series, tackling the MPPP one bit at a time, you know, section by section, chapter by chapter, trying to make it all a bit more accessible. Today, we're diving into chapter 1800. That's the one all about the patent cooperation treaty, the PCT.

And we're really zeroing in on one specific section, MP1832. Exactly. Section 1832. It covers something really practical and honestly pretty crucial if you're using the PCT system, especially if you're filing through the US receiving office. It's all about that foreign filing license.

When do you need one? What are the rules? So, our goal today is well to cut through some of that complexity. We want to highlight the essential points you really need to grasp from 1832 regarding PCT filings and licenses. All right, let's unpack the starting point then. You've got your international application ready to go. The USPTO is the receiving office.

What does 1832 say? Do you need that foreign filing license right then and there just to uh get it filed? Yeah, good place to start. And for that initial step, the rule is pretty straightforward. Generally, you do not need a foreign filing license simply to file the international application in the US receiving office just lodging it with the USPTO in that capacity. That action itself is permitted without the license first. Okay? So just getting the application in the door here in the US doesn't automatically trigger that license need.

That's clear. Exactly. That initial filing step, you're usually okay without it. But here's where it gets well really interesting and quite crucial. While you can file without the license, the license is necessary before the application gets transmitted anywhere else before it goes to a foreign patent office or the international bureau of WIPO or you know another international authority like an ISI or IPA outside the US.

Ah okay. So the license becomes important for the application to actually move forward out of the US system towards that international processing stage. Precisely. It's fundamentally about controlling the potential export of the technical information that's inside that application. Once it leaves the US receiving office, that's considered an export.

That's the trigger point. Got it. It's a transmission, not the initial filing. That's key, right? And that leads us to the exceptions because there are important situations where you don't need that license even for transmission. Section 1832 lays these out.

Okay, exceptions are always important. Let's break those down. What's the first one? The first one's pretty simple. It's about where the invention happened. If the invention was not made in the United States, then you generally don't need a US foreign filing license for transmission.

Simple enough. If the inventive activity happened elsewhere, the US government isn't as concerned about its initial export. Makes sense. Correct. Now, the second exception is a bit more detailed.

It involves having filed before in the US. Specifically, if a US national application on the same invention was filed more than 6 months earlier, more than 6 months. Why that specific time frame? What's the magic behind 6 months? Well, it ties directly into the US National Security Review process. There's typically a six-month window after a US application is filed where the US PTO, often working with defense agencies, reviews it for sensitive material, they can impose a secrecy order within that time if needed. So, the thinking is if a US application for the same invention has been on file for over 6 months and no secrecy order was slapped on it, then any national security concerns would likely have been flagged already.

So, transmitting a PCT on the same stuff is probably okay without a new license. Uh, I see the connection. The six-month mark relates to that security review window. Yeah. But you said same invention.

Are there conditions like what if the secrecy order was applied or I added new things to the PCT app? Absolutely. Critical conditions. First, that earlier US application must not have been under a secrecy order itself. That's a non-starter. And second, your PCT application can't have significant changes or, you know, substantial new subject matter compared to that earlier US filing.

If you've added important new technical details in the PCT version, well, that new stuff might still need a license, even if the original core invention meets the six-month rule. You have to be careful there. Okay, so recap. No license needed just to file in the USRO. And no license needed for transmission if the invention wasn't made here or if you had a clean US filing on the same invention over 6 months ago without major changes.

So, what happens if you don't fit those exceptions? Let's say the invention was made here and you don't have that six-month old US filing or maybe the PCT app does have significant new material, right? For those cases where the exceptions just don't apply, then yes, petition for a foreign filing license is generally required, you need to formally ask the US PTO for permission before that application can be transmitted out. And uh does this also apply if you skip the US receiving office entirely? Say you file the international application directly with WIPO or maybe European patent office as a receiving office. Yes, that's a really important point. Even if you filed directly with a foreign receiving office, if the invention was made in the US, you're still exporting US origin tech data by doing that. So under US law, you still need that license.

If no exception applies, like the invention not being made here, you need to petition the USPTO for the license before you file directly abroad. That's crucial. The need for the license isn't just tied to using the USPTO as RORO, but also to the origin of the invention and the act of sending it outside the US, even via PCT filed elsewhere. Precisely. You have to consider both the origin and the destination or transmission path.

Now, section 1832 does have a kind of safety net, a procedural safeguard, but it's specific. It's for situations where you file the international application with the USPTO receiving office and you should have filed a petition for a license, but maybe you just missed it or didn't realize. Oh. like you designate foreign countries clearly showing you want foreign protection, but forget the separate petition form. What happens? Yeah, that's the scenario.

And it's actually quite applicant friendly in this specific PCT context at the USPTO. If you file with the USRO and it's clear a license is needed, but you omitted the petition, the USPTO will typically treat the international application itself as including a license request. Oh, wow. That's helpful. So, they don't just like reject it or consider it incomplete.

They sort of read the request into the application. Generally, yes. The MPP says if they review the application and determine the license can be granted, they'll usually just issue it. No extra paperwork needed from you at that point. Of course, if they need more information to decide, they'll reach out and ask, but it avoids an immediate procedural failure for many people.

That sounds like a big relief, a real safety net for an innocent mistake. It is. But and this is a big but remember that automatic treatment is only for international applications filed under the PCT with the US PTO as the receiving office. Ah okay. So if I need a license cuz I'm filing something directly abroad outside the PCT system entirely.

This safety net doesn't apply. Correct. For those direct foreign filings outside PCT. If a license is needed and no exception applies you absolutely still need to file that separate formal petition for the license beforehand. No automatic treatment there.

Got it. PCT with USRO gets the safety net. Direct foreign filings outside PCT do not. Very clear distinction. Okay.

So, let's say you get the license either by petition or that automatic treatment. What exactly does it let you do? What's the scope? Good question. The license authorizes the export of technical data. Specifically, technical data related to the preparation, filing, and prosecution of that foreign patent application. So, it covers the application documents, specs, claims, drawings, and the back and forth communication with foreign authorities like WIPO or other patent offices during the process.

And wasn't there a fairly recent update related to this? Something about electronic filing, the EBCT system? Yes, exactly. An important clarification came into effect September 30, 2020. The amendments made it explicit that the scope of the foreign filing license now covers the export of technical data when you use the EPCT online service provided by WIPO. Hm. Why was spelling that out so significant? What did that change practically? Well, before that clarification, there was a bit of, let's say, uncertainty.

Could using WIPO's online platform, EPT, to prepare or manage an application with US origin tech potentially bring you under other broader US export control rules, you know, the ones managed by state, commerce, or energy separate from the USPTO's patent focused license. By explicitly including EPCT use within the foreign filing licenses scope, it provided clarity. It generally means that using EPCT for transmitting data related to your PCT application filed with the USRO or for later international phase actions is covered by that USPTO license. So you typically don't need to worry about separate compliance checks under those other export regulations just for that specific EPCT data export related to your patent filing. That sounds like it provides much needed certainty for practitioners using these modern digital tools.

It definitely does. Although the MP does still wisely include a note of caution. Oh, what does it say? It basically advises applicants to still be mindful. Even with the license covering EPCT data export for patent purposes, you should remain aware of those other export control laws. If you're exporting technical data for reasons beyond just what the foreign filing license covers, or if you're not solely relying on that license, you might still need to check compliance with those broader regulations.

It's just good practice, right? Better safe than sorry when it comes to export controls. Always complex indeed. Now, finally, section 1832 touches on a really serious scenario. What happens if a secrecy order gets imposed? Ah, right. If the government decides the invention needs to be kept secret for national security, what's the impact on a PCT application filed with the USRO? It essentially puts the international process on ice.

If a secrecy order is applied, the application will not be transmitted to the international bureau while that order is active. So that critical transmission step we talked about, the one needed to get the application into the international search and publication stream. It's just completely blocked, completely blocked. The application stays put at the US TTO. And this can have well fatal consequences for the PCT application itself.

If that secrecy order isn't lifted in time, specifically before the deadline passes for the international bureau to receive the official record copy, then the IAB considers the application withdrawn because from their perspective, they never receive the necessary documents to proceed. Wow. So the secrecy order effectively kills the international phase of the PCT application if it lasts too long. That sounds like automatic abandonment internationally. It often is, unfortunately, for the international phase.

Is there any way to salvage the situation if that happens? The MPP points to one potential path, but it only saves your US rights, not the international phase itself. If the US was designated, which it would be if filed with the USRO, you might be able to preserve the application by basically bypassing the blocked international phase and entering the US national phase directly. you'd have to satisfy the requirements under 35 USC 371C. It's not ideal. You lose the PCT streamlining, but it could potentially save your ability to get a US patent.

Okay. So, pulling all these threads together from 1832, what does this all really mean for you, the person listening, the applicant or practitioner handling a PCT filing? It really means first off, you need to consciously evaluate the need for a foreign filing license right from the start. Ask those key questions. Where was the invention made? Is there relevant prior US filing? Is it over six months old? Was it clean? Is there new matter in my PCT app? Answering those helps you know if an exception applies or if you need to proactively get that petition in. And understanding the exceptions can save you work while knowing when to petition avoids problems.

Relying on the automatic treatment is okay as a backup if filing with the USRO, but proactive is better. Exactly. It also highlights just how critical timing is. That six-month rule, the secrecy order deadlines, missing those can lead to unintentional abandonment. Staying on top of the calendar is vital.

And knowing the scope of the license, especially that it covers EPCT data export now clarifies things for using modern tools and helps manage compliance. Right? It's all about navigating these sometimes tricky procedural details to make sure your international plans don't get derailed by license issues or worse, export violations or abandonment. It's amazing how one MPP section 1832 contains so many layers that affect strategy from filing to transmission to exceptions, safety nets, secrecy orders. Absolutely. Each piece understanding when transmission needs a license, the exceptions that avoid it, the automatic request process, the scope for data export, including EPCT, and that hard stop from a secrecy order.

They're all essential parts of the PCT puzzle when you're working through the US system. It really makes you think, doesn't it? how seemingly small details like where an invention was first conceived or the date of an earlier filing can ripple outwards and have such significant consequences down the line in international patent prosecution. Something to definitely keep in mind. And that brings us to the end of this deep dive. This audio summary is part of our broader educational series exploring the MPP.

We do want to extend a special thank you to Mike Shepard, the creative director who organized this whole series. And just a necessary reminder for everyone listening, this summary was put together with help from AI tools like Chat GPT and Notebook LM. It might have errors or omissions. It's really meant for general educational andformational purposes. It's definitely not legal advice and it's no substitute for proper formal instruction.

That's right. For the authoritative word, always consult the official MPP document itself. Talk to a qualified instructor or best yet consult with a registered Haden practitioner.