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I have looked and looked on the PTO web site for a current (i.e., post Sept.2011) version of Appendix L and/or a current copy of US Title 35. Every "Patent Laws, Consolidated" link I find takes me to the Sept. 2007 version of Appendix L. May we please have a current version of Title 35 posted somewhere?
Disagreed Ideas must go down on the list, which is not happening. They are not being sorted by the votes, and actually there's an idea with 1 "agreement" that is being shown after another one that have no votes.. (!!)
Although it is well known that the foreign filing license exempts applicants from complying with the export regulations for certain limited purposes, i.e. filing a counterpart in a foreign nation, portions of 37 CFR 5.11, which are reproduced in Section 140 of the MPEP, convolutedly distinguish between the exemption bestowed by, and exemptions associated with, acquiring a foreign filing license and the necessity of complying ...more »
Although it is well known that the foreign filing license exempts applicants from complying with the export regulations for certain limited purposes, i.e. filing a counterpart in a foreign nation, portions of 37 CFR 5.11, which are reproduced in Section 140 of the MPEP, convolutedly distinguish between the exemption bestowed by, and exemptions associated with, acquiring a foreign filing license and the necessity of complying with the export regulations.
37 CFR 5.11 (a) states the well known exemption associated with the foreign filing license: there is no need to comply with the export regulations for purposes related to filing a foreign counterpart once the applicant obtains the foreign filing license. Yet, 37 CFR 5.11 (e) exempts applicants from obtaining a foreign filing license for inventions originating overseas. Nonetheless, despite the exemption supplied by 37 CFR 5.11 (e), convoluted language contained in 37 CFR 5.11(c) adds an additional rule:
“Where technical data in the form of a patent application, or in any form, are being exported for purposes related to the preparation, filing or possible filing and prosecution of a foreign patent application, without the license from the Commissioner for Patents referred to in paragraphs (a) or (b) of this section, or on an invention not made in the United States, the export regulations […] must be complied with […]”
The clearest interpretation stemming from 37 CFR 5.11(c) is that, after filing for a patent in the United States based on an invention that originated in a foreign country, when an applicant fails to acquire a foreign filing license for the foreign invention, said applicant must comply with the export regulations when exporting technical data associated with said invention, even if that exporting relates to filing a foreign counterpart based on that foreign invention. Thus, complying with the export regulations in this unique scenario is required despite being exempted from having to acquire a foreign filing license.
IBM suggests clarifying the confusion associated with 37 CFR 5.11 by confirming and clarifying the above interpretation, (or providing an alternative), by adding the following text to the existing comments associated with Section 140 of MPEP:
“After acquiring a foreign filing license from the USPTO for patent applications not subject to a secrecy order, an applicant may export technical data abroad for purposes relating to the preparation, filing or possible filing and prosecution of a foreign patent application without separately complying with the regulations contained in 22 CFR parts 121 through 130 (International Traffic in Arms Regulations of the Department of State), 15 CFR parts 730-774 (Regulations of the Bureau of Industry and Security, Department of Commerce) and 10 CFR part 810 (Foreign Atomic Energy Programs of the Department of Energy. See 37 CFR 5.11 (b). However, note that the export of subject matter abroad for purposes not related to foreign filing of a patent application, such as preparing an application in a foreign country for subsequent filing in the USPTO is not covered by any license from the USPTO. Applicants are directed to the Bureau of Industry of Security at the Department of Commerce for the appropriate clearances.
For inventions that originate overseas, a foreign filing license is not required to file outside the United States; however, after filing in the United States, and before a lapse of six months time without a secrecy order, re-exporting such material for purposes relating to the preparation, filing or possible filing and prosecution of a foreign patent application without a foreign filing license from the USPTO may require compliance with other export regulations, such as those promulgated by Bureau of Industry of Security at the Department of Commerce. See 37 CFR 5.11(c) and (e).”
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In my opinion, applicants should not be able to add additional inventors to correct an issued patent because the additional inventor(s) have not been searched for prior art. As all examiners know, an inventorship search is critical to all first actions. Also, the new AIA law removes the language "and such error arose without any deceptive intention". I've seen a couple of these petitions now, and it really begs the question, ...more »
In my opinion, applicants should not be able to add additional inventors to correct an issued patent because the additional inventor(s) have not been searched for prior art. As all examiners know, an inventorship search is critical to all first actions. Also, the new AIA law removes the language "and such error arose without any deceptive intention". I've seen a couple of these petitions now, and it really begs the question, "How can we add inventors without a prior art search of the inventor in question?"
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