35 U.S.C. § 184 — Filing of application in foreign country

submitted 74 years ago by ch. 950 to r/title-35-PATENTS · 353 words · no verdicts yet

in plain englishAI-generated · not legal advice

Without a license from the Commissioner of Patents, no one may file a patent application abroad for a U.S.-made invention within six months of filing it in the United States. A license can't be granted for an invention under a secrecy order unless the relevant agency heads agree, though it can sometimes be granted after the fact if the foreign filing was an honest mistake.

(a) Filing in Foreign Country. Unless the Commissioner of Patents licenses it, no one may file — or cause or allow to be filed — a foreign patent, utility model, industrial design, or model application for an invention made in the United States, sooner than six months after filing it here. If the invention is under a secrecy order issued under section 181, a license can't be granted unless the department and agency heads who caused that order agree. A license can be granted after the fact if the foreign filing happened by mistake and the application doesn't disclose an invention that section 181 covers. (b) Application. In this chapter, "application" includes the application itself and any later changes, additions, or extra parts, or any applications split off from it. (c) Subsequent Modifications, Amendments, and Supplements. A license's scope covers later changes, additions, or extra material — as long as the original application wasn't required to be kept confidential under section 181, and the changes don't alter the invention's basic nature in a way that would require that confidentiality. If no license was ever needed to file abroad, those same later changes can still be made without a license to the foreign application, under the same two conditions: the U.S. application wasn't required to be kept confidential under section 181, and the changes don't alter the invention's basic nature in a way that would trigger that requirement.

the actual law source: uscode.house.gov ↗public domain

(a)Filing in Foreign Country.—

Except when authorized by a license obtained from the Commissioner of Patents a person shall not file or cause or authorize to be filed in any foreign country prior to six months after filing in the United States an application for patent or for the registration of a utility model, industrial design, or model in respect of an invention made in this country. A license shall not be granted with respect to an invention subject to an order issued by the Commissioner of Patents pursuant to section 181 without the concurrence of the head of the departments and the chief officers of the agencies who caused the order to be issued. The license may be granted retroactively where an application has been filed abroad through error and the application does not disclose an invention within the scope of section 181.

(b)Application.—

The term “application” when used in this chapter includes applications and any modifications, amendments, or supplements thereto, or divisions thereof.

(c)Subsequent Modifications, Amendments, and Supplements.—

The scope of a license shall permit subsequent modifications, amendments, and supplements containing additional subject matter if the application upon which the request for the license is based is not, or was not, required to be made available for inspection under section 181 and if such modifications, amendments, and supplements do not change the general nature of the invention in a manner which would require such application to be made available for inspection under such section 181. In any case in which a license is not, or was not, required in order to file an application in any foreign country, such subsequent modifications, amendments, and supplements may be made, without a license, to the application filed in the foreign country if the United States application was not required to be made available for inspection under section 181 and if such modifications, amendments, and supplements do not, or did not, change the general nature of the invention in a manner which would require the United States application to have been made available for inspection under such section 181.

Source credit: (July 19, 1952, ch. 950, 66 Stat. 807; Pub. L. 100–418, title IX, § 9101(b)(1), Aug. 23, 1988, 102 Stat. 1567; Pub. L. 106–113, div. B, § 1000(a)(9) [title IV, § 4732(a)(10)(B)], Nov. 29, 1999, 113 Stat. 1536, 1501A–582; Pub. L. 112–29, § 20(b), (j), Sept. 16, 2011, 125 Stat. 333, 335.)

history & why it existsrecord from the source credit

1952Enacted · Act of July 19, 1952, ch. 950 · 66 Stat. 807
1988Amended · Pub. L. 100-418 · 102 Stat. 1567
1999Amended · Pub. L. 106-113 · 113 Stat. 1536, 1501
2011Amended · Pub. L. 112-29 · 125 Stat. 333, 335

A history note hasn’t been published yet. The record shows enactment by ch. 950 on 1952-07-19.

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