PCT, foreign filing licenses and international designs

Three systems meet here: U.S. export control of inventions (secrecy orders and foreign filing licenses), the PCT for utility applications, and the Hague Agreement for designs. Most questions are about time limits counted from the priority date.

PCT and international2 min read4 sections

Must-know for the exam

A foreign filing license is needed to file abroad within six months of the U.S. filing for an invention made in the U.S. (35 U.S.C. 184; 37 CFR 5.11)
The filing receipt usually shows whether a license was granted
Unlicensed foreign filing made through error can be cured by a retroactive license (37 CFR 5.25)
Breaching a secrecy order can lead to abandonment and criminal penalties (35 U.S.C. 182, 186)
RO/US is competent if at least one applicant is a U.S. resident or national (37 CFR 1.421)
Article 19 amendments: later of 2 months from ISR transmittal or 16 months from priority (PCT Rule 46.1)
Demand: later of 3 months from ISR/WO transmittal or 22 months from priority (PCT Rule 54bis.1)
International publication: promptly after 18 months from priority (PCT Art. 21)
U.S. national stage: basic national fee (and copy) by 30 months from priority (37 CFR 1.495(b))
Translation and oath can follow on notice with a surcharge (37 CFR 1.495(c))
371 applications use PCT unity of invention, not U.S. restriction practice (37 CFR 1.475, 1.499)
RO/US restores PCT priority under the 'unintentional' criterion (MPEP 1828.01)
PPH: every U.S. claim must sufficiently correspond to claims found allowable; no petition fee; one chance to correct
Hague designs designating the U.S.: a claim and the inventor's oath; 15-year term from grant

On this page · 4 sections

Traps that cost marks

Counting 30 months from the international filing date instead of the priority date.
Using the 16-month date when the search report arrived late.
Thinking a U.S. filing automatically licenses foreign filing right away.
Assuming an unlicensed foreign filing is always fatal.
Confusing the demand deadline with the Article 19 deadline.
Assuming the USPTO accepts PCT filings from anyone.
Underestimating the consequences of breaching a secrecy order.
Thinking only some claims need to match the allowed claims.

PCT time line from the priority date

Month	Event
12	File the PCT application (priority year)
16 (or 2 months after ISR)	Article 19 amendments
18	International publication
22 (or 3 months after ISR/WO)	Demand for Chapter II
30	U.S. national stage: basic national fee

PCT Articles 19, 21, 22, 39; Rules 46.1, 54bis.1; 37 CFR 1.495

Where to look

When a question turns on a detail you are unsure of, search these sources on the exam computer:

•MPEP 115-150, 1801-1896, 2900-2920 (9th ed., Rev. 01.2024)
•35 U.S.C. 181-188, 361-376, 381-390
•37 CFR Part 5, 1.421-1.495
•Global/IP5 PPH notice (2014)

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