Getting a faxed Foreign Filing License from the USPTO

Many readers doubtless already know how to get a faxed Foreign Filing License from the USPTO.  But a recent posting on the EFS-Web listserv prompts me to post this article describing the Best Practice for such a request.

To obtain a faxed FFL, you fax a request to the USPTO, and then you wait by the fax machine for the USPTO to send you the FFL.

The process is described at MPEP § 502 and MPEP §140.

What goes into the fax?  

Cover letter.  One thing that goes into the fax is a cover letter.  Here is a suggested cover letter:

Fax to +1-571-273-0185

Petition under 37 CFR § 5.13

The undersigned hereby requests an expedited foreign filing license.  Attached hereto is a legible copy of the material upon which a license is desired.  Also attached hereto is Form 2038 in the amount of $200 to pay fee code 1463 (37 CFR § 1.17(g)).

Kindly fax the license to <your fax number goes here>.

Thank you.

<signature>

<name, address, phone>

The material upon which a license is required.  A second thing that needs to go into the fax is “the material upon which a license is required”.  What exactly should this be?  Well, suppose you have a patent application that is ready to file or nearly ready to file.  In that case, the patent application itself is ideal for the purpose of this fax.  Failing that, maybe you have a well-prepared and complete invention disclosure from the inventor.  In that case, the invention disclosure will be a good choice for this purpose.

Common sense should be your guide on this question of what material to include.  Clearly if the material that you include is skimpy, then the FFL is less likely to make you feel safe and secure about your later filing activities.  On the other hand if the material that you include is at least as broad in substantive content as the foreign patent application that you are getting ready to file, then this will make you feel much more safe and secure about your later filing activities.

A Federal Register notice dated July 23, 2008 comments upon the consequences of the use of skimpy material:

For example, the USPTO has received short abstracts, PowerPoint® slides and even titles of inventions as the disclosure for which a foreign filing license is requested.  Although the USPTO will usually process such requests, any foreign filing license granted … on such short description may not authorize filing abroad the ultimate resulting patent applications …

Consider that you are going to be using a fax machine to send this document to the USPTO.  This means that if the material relies upon the use of color to communicate its meaning, then the meaning may be lost when the fax machine flattens color to gray scale.  You do not want to face the question, TYFNIL, as to whether the FFL failed to actually cover the subject matter due to a flattening of color to gray scale.

The fee.  You will need to pay the Rule 17g fee code which is $200.  Yes, the alert reader will immediately point out that this fee code can be cut in half ($100) for a filer who is a small entity and can be cut in half again ($50) for a filer who is a micro entity.  I suggest that a day when you are scrambling around to get an urgently needed FFL is not a day to increase the pressure by trying to round up documents and financial information so that a small entity or micro entity status can be proven as part of this faxing process.  Just suck it up and pay the $200 instead of struggling to try to knock $100 or $150 off.

Yes you could also pay this fee by means of an authorization to charge a Deposit Account.

Sending the fax.  Send the fax to +1-571-273-0185.  The Best practice is to send it in “super fine mode” so that it will come through with the best possible quality.  It is a Best Practice is to stand and watch closely as the fax goes through.  Make sure that two pages do not stick together as they go through the document feeder.  Make sure that you get an actual fax receipt and that the receipt lists the same number of pages that you think you sent.

What to do next.

Placing a followup telephone call. The Best Practice is to call up L&R (Licensing and Review) at +1-571-272-8187 to nudge things along.  The timing of the call is a function of the time of day at which you sent the fax:

• If you sent the fax during business hours at the USPTO, then as soon as you have successfully sent the fax, pick up the phone and place the call.
• If you sent the fax outside of business hours at the USPTO, then set an alarm for 9AM Eastern Time and pick up the phone at that time and place the call.

The goal for this phone call is to reach a human being and to have an actual conversation.  You may need to call more than once until you actually reach a human being.

When you reach the human being, ask very nicely if they received the fax. The unspoken question during the phone call will be, can they please send you the Foreign Filing License Real Soon Now. You don’t need to ask that question and there is no need to push them to answer that question. They know perfectly well that it’s the real reason you called.  But everyone on the phone call can maintain the fiction that the only reason you called was to make sure the fax came through okay.

When to expect the FFL.  The USPTO’s published goal is to provide the FFL within three business days (assuming that there is no security problem with the subject matter).  In our experience, if we fax it in before 9AM Eastern Time, about half the time we actually receive the faxed FFL later the same day.

Preserving the FFL.  Keep in mind that it is not enough that you preserve your copy of the FFL (which is only one or two pages) itself.  In addition to that one- or two-page document, you also need to preserve a copy of the entire fax that you sent.  You need to be able to point later to the actual material upon which the FFL was granted in case the question comes up as to what exactly was the scope of the FFL.

Filing a US provisional application instead.  Keep in mind that in many cases it may be just as well to suck it up and file a US provisional application instead of or in addition to requesting a faxed FFL.  Yes it might take a couple of days longer to get the FFL by means of a provisional application, as compared with how long it takes to get it by means of a faxed request.  But the provisional filing fee is $260, which is only $60 more than what you were already going to pay for the faxed FFL.  (The provisional filing fee might instead be a mere $130 if the applicant counts as a small entity.)

The point here is that by filing the provisional application, you have nailed down a filing date for the material contained in the application.  That filing date might make all the difference in the world for an applicant that later finds it necessary to overcome a piece of prior art, or that finds itself in a “who filed first” fight with a competitor.

The last few provisional patent applications that we filed at OPLF received their Filing Receipts (each of which contained an FFL) an average of eight calendar days after the filing date.

If you’ve done this, how long did it take for you to receive your FFL?  What do you think about the pros and cons of filing a US provisional instead of a request for a faxed FFL?  Please post your comments below.