MPEP Q & A 242: When will an international application not need a foreign filing license?

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Question:

List two reasons why an international application filed with, or forwarded to, the International Bureau would not need a foreign filing license.

Answer:

An international application filed with, or forwarded to, the International Bureau must have a foreign filing license unless:

  • (1) the invention was not made in the United States; or
  • (2) a U.S. national application on the invention was filed at least six months prior to the filing of the international application, the U.S. national application is not subject to a secrecy order, and the international application does not contain modifications, amendments, or supplements changing the general nature of the invention in a manner that would require any corresponding United States application to be or have been available for inspection under 35 U.S.C. 181.

Chapter Details:

The answer to this question can be found in chapter 1800 of the MPEP. This chapter covers the Patent Cooperation Treaty.

The answer is from the 9th Edition, Revision 10.2019. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.

Section Summary:

This question and answer comes from section 1805 of the MPEP.  The following is a brief summary of section 1805.

1805 Where to File an International Application

An application may be filed to the U.S. Receiving Office only if one or more of the applicants is a resident or a national of the U.S. This section discusses further details on where to file an international application including mailing information.

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