37 CFR 5.25: Petition for retroactive license

Taken from the Ninth Edition of the MPEP, Revision 07.2022, Published February 2023

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5.25    Petition for retroactive license.

  • (a) A petition for retroactive license under 35 U.S.C. 184 shall be presented in accordance with § 5.13 or § 5.14(a), and shall include:
    • (1) A listing of each of the foreign countries in which the unlicensed patent application material was filed,
    • (2) The dates on which the material was filed in each country,
    • (3) A verified statement (oath or declaration) containing:
      • (i) An averment that the subject matter in question was not under a secrecy order at the time it was filed aboard[sic], 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 filed abroad through error without the required license under § 5.11 first having been obtained, and
    • (4) The required fee (§ 1.17(g) of this chapter).
  • (b) The explanation in paragraph (a) of this section must include a showing of facts rather than a mere allegation of action through error. The showing of facts as to the nature of the error 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 error should cover the period leading up to and including each of the proscribed foreign filings.
  • (c) 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.
[49 FR 13463, Apr. 4, 1984; para. (a), 56 FR 1924, Jan. 18, 1991, effective Feb. 19, 1991; para. (c) removed, 62 FR 53132, Oct. 10, 1997, effective Dec. 1, 1997; para. (a)(4) revised, para. (b) redesignated as para. (c) and para. (b) added, 69 FR 56481, Sept. 21, 2004, effective Nov. 22, 2004; paras. (a)(3)(iii) and (b) revised, 77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012]