U.S. Code » Title 35 » Part PART II— PATENTABILITY OF INVENTIONS AND GRANT OF PATENTS › Chapter CHAPTER 17— SECRECY OF CERTAIN INVENTIONS AND FILING APPLICATIONS IN FOREIGN COUNTRY

35 U.S.C. § 184

Filing of application in foreign country

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(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.(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.)Historical and Revision Notes

Based on Title 35, U.S.C., 1946 ed., § 154 (Feb. 1, 1952, ch. 4, § 4, 66 Stat. 5).

Language is changed.

Editorial NotesAmendments

2011—Pub. L. 112–29 designated first to third pars. as subsecs. (a) to (c), respectively, inserted headings, in subsec. (a), struck out “of this title” after “181” in two places and struck out “and without deceptive intent” after “through error”, and, in subsec. (c), struck out “of this title” after “under section 181” in first sentence.

1999—Pub. L. 106–113 substituted “Commissioner of Patents” for “Commissioner” two places in first par.

1988—Pub. L. 100–418, § 9101(b)(1)(A), substituted “filed abroad through error and without deceptive intent” for “inadvertently filed abroad” in first par.

Pub. L. 100–418, § 9101(b)(1)(B), added third par. relating to scope of a license.

Statutory Notes and Related SubsidiariesEffective Date of 2011 Amendment

Amendment by Pub. L. 112–29 effective upon the expiration of the 1-year period beginning on Sept. 16, 2011, and applicable to proceedings commenced on or after that effective date, see section 20(l) of Pub. L. 112–29, set out as a note under section 2 of this title.

Effective Date of 1999 Amendment

Amendment by Pub. L. 106–113 effective 4 months after Nov. 29, 1999, see section 1000(a)(9) [title IV, § 4731] of Pub. L. 106–113, set out as a note under section 1 of this title.

Effective Date of 1988 Amendment

Pub. L. 100–418, title IX, § 9101(d), Aug. 23, 1988, 102 Stat. 1568, provided that:“(1) Subject to paragraphs (2), (3), and (4) of this subsection, the amendments made by this section [amending sections 184 to 186 of this title] shall apply to all United States patents granted before, on, or after the date of enactment of this section [Aug. 23, 1988], to all applications for United States patents pending on or filed after such date of enactment, and to all licenses under section 184 granted before, on, or after the date of enactment of this section.“(2) The amendments made by this section shall not affect any final decision made by a court or the Patent and Trademark Office before the date of enactment of this section [Aug. 23, 1988] with respect to a patent or application for patent, if no appeal from such decision is pending and the time for filing an appeal has expired.“(3) No United States patent granted before the date of enactment of this section [Aug. 23, 1988] shall abridge or affect the right of any person or his successors in business who made, purchased, or used, prior to such date of enactment, anything protected by the patent, to continue the use of, or to sell to others to be used or sold, the specific thing so made, purchased, or used, if the patent claims were invalid or otherwise unenforceable on a ground obviated by this section and the person made, purchased, or used the specific thing in reasonable reliance on such invalidity or unenforceability. If a person reasonably relied on such invalidity or unenforceability, the court before which such matter is in question may provide for the continued manufacture, use, or sale of the thing made, purchased, or used as specified, or for the manufacture, use, or sale of which substantial preparation was made before the date of enactment of this section, and it may also provide for the continued practice of any process practiced, or for the practice of which substantial preparation was made, prior to the date of enactment of this section, to the extent and under such terms as the court deems equitable for the protection of investments made or business commenced before such date of enactment.“(4) The amendments made by this section shall not affect the right of any party in any case pending in court on the date of enactment of this section [Aug. 23, 1988] to have its rights or liabilities—“(A) under any patent before the court, or“(B) under any patent granted after such date of enactment which is related to the patent before the court by deriving priority rights under section 120 or 121 of title 35, United States Code, from a patent or an application for patent common to both patents,determined on the basis of the substantive law in effect before the date of enactment of this section.”

Promulgation of Regulations

Pub. L. 100–418, title IX, § 9101(c), Aug. 23, 1988, 102 Stat. 1568, directed Commissioner of Patents and Trademarks to prescribe such regulations as necessary to implement the amendments made by section 9101 (amending sections 184 to 186 of this title).

Notes of Decisions
Cited in 33 cases (2 in the last 5 years), 1965–2025 · leading case: In re Gaertner, 604 F.2d 1348 (C.C.P.A. 1979).
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In re Gaertner, 604 F.2d 1348 (C.C.P.A. 1979). · cites it 11× “The PTO Group 220 (Security Group), Licensing and Review Section, denied Gaertner’s petition for a retroactive license for foreign filing under 35 U.S.C. § 184 , 2 finding that *1351 he had not provided the required verified showing of facts and that his showing indicated no…”
Barr Rubber Prods. Co. v. Sun Rubber Co., 253 F. Supp. 12 (S.D.N.Y. 1966). · cites it 10× “It maintains that 35 U.S.C. §§ 184 , 185, when read together and considered in the light of predecessor provisions, restrict the Commissioner’s authority to issue retroactive licenses to the period while a United States application is still pending.”
Shelco, Inc. v. Dow Chem. Co., 466 F.2d 613 (7th Cir. 1972). · cites it 5× “It further held that the patent was void in its entirety under 35 U.S.C. §§ 184 and 185 (filing application in a foreign country without a proper license to do so).”
The Barr Rubber Prods. Co., Plaintiff-Appellee-Cross v. The Sun Rubber Co., Defendant-Appellant-Cross & Wonder Prods. Co., 425 F.2d 1114 (2d Cir. 1970). · cites it 2× “Goodrich Company as defendants, the denial of a motion for summary judgment that Sun’s patent is invalid for violations of 35 U.S.C. §§ 184 , 185, 9 13and the denial of a motion it had made for the production of documents.”
Transitron Elec. Corp. v. Hughes Aircraft Co., Transitron Elec. Corp. v. Hughes Aircraft Co., 649 F.2d 871 (1st Cir. 1981). · cites it 2× “Neither the statute itself, 35 U.S.C. § 184 , nor the regulations under it provide much guidance on the question of what constitutes an application for purposes of triggering the six-month waiting period, although the regulations related to the scope of licenses for foreign…”
Minnesota Mining & Mfg. Co. v. Norton Co., 240 F. Supp. 150 (N.D. Ohio 1965). · cites it 5× “We come finally to a confrontation with the present section, 35 U.S.C.A. § 184 , which has been in effect since that revision in 1952.”
Transitron Elec. Corp. v. Hughes Aircraft Co., 487 F. Supp. 885 (D. Mass. 1980). · cites it 2× “Finally, the subject matter was treated as new matter in Hughes’ prosecution of the patent of addition in Great Britain. Transitron’s second theory of antitrust violation is that even if the patent was not obtained by fraud on the Patent Office, Hughes violated the Invention…”
Twin Disc, Inc. v. United States, 10 Cl. Ct. 713 (Ct. Cl. 1986). · cites it 6× “10), pursuant to 35 U.S.C. § 184 , the patentee was precluded from filing its amendment in a foreign country prior to six months after September 21, 1966, i.”
Nitto Boseki Co., Ltd. v. Owens-Corning Fiberglas, 589 F. Supp. 527 (D. Del. 1984). · cites it 3× “) Counterclaim II alleges that plaintiff’s patent is invalid because certain amendments were made in plaintiff’s corresponding British patent application without having been licensed for filing abroad in violation of 35 U.S.C. §§ 184 and 185 and thus plaintiff’s patent cannot…”
Allegheny Drop Forge Co. v. Portec, Inc., 370 F. Supp. 673 (W.D. Pa. 1974). · cites it 4× “§ 103 ; 1 *675 (2) prior filing in a foreign country-contrary to 35 U.S.C. §§ 184 and 185; 2 (3) unclean hands, it being alleged that defendant withdrew an interference pending before the patent office in order to “cover up” (to use a phrase popular at this moment of time) prior…”
In re Sarkar, 575 F.2d 870 (C.C.P.A. 1978). “The solicitor notes that Sarkar was granted a license under 35 U.S.C. § 184 to file similar applications abroad and that Sarkar had failed to show that no foreign application filed thereunder was now open to the public.”
Control Sys. Rsch., Inc. v. Aerotech, Inc., 429 F. Supp. 914 (W.D. Pa. 1977). · cites it 3× “The preliminary issue now before the Court relates to the validity vel non of defendant’s contention (in paragraph 9(m) of amended answer) that the patent in suit is invalid under 35 U.S.C. §§ 184 and 185 because foreign applications were filed without a license.”
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