USPTO proposes to fix its Foreign Filing License rules

For more than three years now, there has been an urgent need for USPTO to fix a problem with its FFL rules, 37 CFR § 5.11 et seq.  See my blog article USPTO needs to update its Foreign Filing License rule (October 29, 2016).  After three years of being repeatedly reminded of this, USPTO has done the right thing and has published a proposed revision to its FFL rules.  You can read about it here:

Facilitating the Use of WIPO’s ePCT System To Prepare International Applications for Filing With the United States Receiving Office, 85 FR 5362, January 30, 2020.

Comments are due by March 30.  Twenty-one patent practitioners filed this comment

10 Replies to “USPTO proposes to fix its Foreign Filing License rules”

  1. Carl, is there any realistic opportunity to rope-in the Hague Agreement filings in this rules change as well? These have much the same problem as with the utility applications file by ePCT. In my practice I do not even offer my clients the opportunity to designate the US in a Hague Application since it appears that it would require a two-step process with additional fees to the client (first file the Hague application designating only the US, wait three weeks for the foreign filing license, and then file another Hague application designating the other desired countries). Seems a lot easier to just file a standard US design application (which can then easily be associated with your customer number so you don’t lose track of it) and subsequently file the Hague applications for the foreign offices.

    1. Keep in mind how difficult this rulemaking task must have been for the USPTO. Every time a new US patent application gets filed, it passes through a security review process in which a dozen federal agencies participate, leading in most cases to a grant of an FFL. What we are talking about is a process that can be changed only if it somehow gets buy-in from each branch of the military and from every part of the national security bureaucracy of the US.

      But what is the problem for which you feel a solution is needed? If I file a US domestic design case and obtain an FFL, and then within six months file a Hague case at the IB, the FFL covers that filing at the IB, right?

      If on the other hand you feel that you must file a Hague case that does not claim priority from any previous case, what is stopping you from filing it at the USPTO as office of indirect filing, complete with all of your designations (including the US)? The USPTO will then carry out its security review and (assuming that you receive an FFL) the USPTO will transmit the case to the IB. I don’t understand why you feel you would need to two two Hague filings.

  2. Carl, sounds like you’re correct when filing a Hague application at the US PTO, but is my concern warranted if filing directly at using E-HAGUE? The US PTO wouldn’t have a chance to review and issue an FFL in that case before it’s already outside of the US border.

    Also, has there ever been a case where a secrecy order has been slapped onto a design patent application, in the history of the US PTO? It’s hard to imagine how that would happen, or that it would be common.

    1. I still don’t understand what your “concern” is. Was your invention made in the US? Do you not have an FFL? If the invention was made in the US, and if you do not have an FFL, then it’s not whether you have a “concern” or not, it’s that you’re violating the rules if the place where you file your Hague case is the IB.

  3. >then it’s not whether you have a “concern” or not, it’s that you’re violating the rules if the place where you file your Hague case is the IB.

    Right, which is why I don’t file Hague Applications at the IB without first having an FFL (after filing the application first in the US). It’s still a two-step process. It just struck me that if we’re looking at the PCT process in this regard that we should also consider Hague applications while we’re at it, but I understand it’s challenging and there are a lot of moving parts, particularly when multiple gov’t agencies from multiple countries are involved.

    1. I am sorry I still don’t get it. What do you mean “we should also consider Hague applications while we’re at it”? What is it that you think is broken and needs fixing?

      If you have an FFL, go ahead and file your Hague case directly at the IB. If you don’t have an FFL, file your Hague case at the USPTO. What’s the problem? What is the problem that needs fixing?

      You can easily skip any “two-step process” by simply filing your Hague case at the USPTO, right?

      I don’t see where there are “a lot of moving parts”. You simply file your Hague case at the USPTO. USPTO grants the FFL, USPTO forwards the case to the IB, and everything moves ahead.

  4. I suggest a minor revision: in the paragraph immediately following the gray-highlighted block quote, in the text “choice to refrain from use of ePCT”, replace “choice” with –choose–.

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