Foreign Filing Licenses – Incredibly mean and overlooked, but overlooking them can have serious consequences. Many countries, including the United States, require inventors to obtain special permission to file patent applications in the inventor’s country or in patent offices outside the inventor’s country. A foreign filing license is a government-issued document representing this permission for inventors and companies to file applications in foreign countries. Failure to obtain this permission can result in serious problems such as fines, revocation of patents, and even imprisonment.
why so serious? Well, like most issues of foreign export compliance, it comes down to a strong desire of each country to protect its national security and economic interests. , and the risk of unauthorized export of technology or classified information that may affect national secrets.
But there are few exceptions in the technology category, whether it’s golf club grips or new gadgets worthy of villainous Bond’s sinister laughter. In many countries where a foreign filing license is required, all patent applications, whether utility, botanical or design, intended for travel abroad must all be granted a foreign filing license before they can be filed abroad. I have.
Episode summary
The topic is filing… foreign filing. In this month’s episode, we take you into a tale of international mystery and conspiracy, and the secret world of foreign filing licenses. I will explain as follows.
- Three main categories of admission requirements
- Strategies for data collection and decision matrix for navigating potential competitors
- An example of an international application conflict and its resolution walkthrough
the world is more than enough
Our research shows that there are at least 35 countries with foreign filing requirements, including 30 countries participating in the Patent Cooperation Treaty (PCT), according to WIPO. It is difficult to imagine an international strategy that would not be influenced by celebrities such as the United States, China, India, Germany, and the United Kingdom.
Further complicating all of this is the potential for jurisdictional disputes. The requirements for submitting licenses can vary widely from country to country and can even be contradictory in some cases. In some countries, requirements may be based on the citizenship, residence, or place of business of the inventor or applicant. Other countries are more interested in the location of their inventive activity. In many of these countries, inventions must first be filed with their respective patent offices, but what if the inventor resides in multiple jurisdictions, each with an initial filing requirement? Ideas jointly conceived in the United States and India are now subject to two competing foreign filing jurisdictions. With the rise of distributed workforces, teleconferencing, and outsourcing (both inventor and inventive), more and more people reside and occur across legal boundaries. The boundaries of innovation are blurring rapidly, but national patent laws must still be followed.
amount of comfort
When dealing with foreign institutions, foreign intellectual property jurisdictions, and the various complexities that go along with them, you may feel that a “double O” designation is necessary to properly carry out foreign filing procedures. , requires a step-by-step approach to determining requirements and identifying conflicts. , and by systematically resolving conflicts, the complexity can be reduced to a repeatable formula.
Decision data can be reduced as follows:
- Who? – Citizenship/residence and/or place of business of inventor
- Where? – place of invention activity
- what? – Does the invention relate to military applications, national security, or national secrets? This is especially where more severe penalties may apply if you don’t get this right.
Then use the data above to identify the countries involved. With respect to intellectual property jurisdiction and foreign filing license (FFL) requirements, there are three main categories of countries:
- No FFL requirement. Notable countries include Japan, Hong Kong, Mexico, South Africa, Switzerland and Thailand.
- Based on inventor/applicant location. FFL requirements focus on the inventor/applicant’s citizenship, residence, or place of business. Notable countries include Belgium, India, Israel, Italy, and the United Kingdom.
- Based on location of invention activityThe FFL requirements focus on the geographic location of inventive activity. Notable countries include China, Germany, Russia, Spain, and the United States.
Additionally, there are two subcategories. Both types of countries with foreign filing license requirements require a license for all types of subject matter, regardless of confidentiality, while others are related to national security, state secrets, and/or military use. Some countries are only concerned with inventions.
Who? – Inventor citizenship/residence and/or place of business
It is important to identify all parties involved when collecting the data required for foreign filing procedures. These parties may include inventors, assignees, and applicants. Once the citizenship, residency, and place of business data is collected from the person concerned, the relevant country can be identified. This location data is especially important for identifying countries from the second category.
Where? – Place of invention activity
Countries in the third category have jurisdictional involvement in the location of inventive activity. When developing a comprehensive foreign filing strategy, it is important to identify where the inventive activity occurred. Note that inventive activity can occur piecemeal, in parts, and even on virtual platforms. For example, a Chinese inventor in China can collaborate with an American inventor in the United States by videoconference. This cooperation may result in some inventive activity occurring in China and some inventive activity occurring in the United States. This would place the entire invention activity under the jurisdiction of both the United States and China.
what? Is the invention related to military applications, national security, or national secrets?
This third key question is arguably the most important in terms of impact severity. Some countries carry severe penalties, including fines and even imprisonment, especially for the willful disclosure of this type of material. Proper foreign filing procedures are therefore essential for this type of material. Moreover, in some countries his second or third category of jurisdictional requirements only apply if the invention concerns this type of material. For example, if a new useful ammunition invention activity was filed by an Israeli resident, the application would be subject to Israel’s foreign filing license jurisdiction.
From Russia With Love: Conflict
If problems arise with foreign filing strategies, it is always best to contact the affiliate or intellectual property firm in the country in question. With that said, here are some examples of conflicts:
- Two or more inventors/applicants with different citizenships/residences in second category countries
- Two or more inventors engaged in invention activities in two or more countries of the third type
- Inventors who have citizenship/residence in a 2nd category country but conceived an invention or part of an invention in a 3rd category country
Live Andlet Files: Solutions to Potential Conflicts
So you find yourself involved in a jurisdictional dispute between two or more countries. Fortunately, there may be some applicable options.
- Will the disputed country offer a foreign filing license without filing an application? If time permits, the required documents can be submitted to the patent offices of the countries offering foreign filing licenses without filing. Once a foreign filing license has been received from that patent office, file the application with the patent office involved in the other jurisdiction.
- Can an invention be divided into different invention parts for the countries involved in the jurisdiction? In that case, an application for the invention part can be filed with the respective patent office. In some countries, it may then be possible to pursue or receive foreign filing licenses for these parts of the invention for further pursuit in the PCT and/or national filings.
- Consult with an attorney in the country of dispute. This is considered a best practice and the chosen solution can take this into account. Patent law is complex and can vary greatly from country to country. So it might be a good idea to have some local knowledge on your side.
gadgets, gizmos, gears
A good spy story wouldn’t be complete without some cool gadgets and gizmos. That’s why her Q department at Aurora created a table that visually summarizes the research they’ve done on the countries they need to consider. You can find and download a copy here. Note: This table is for reference only. As national intellectual property laws are subject to change, the current table may not reflect the current state of foreign filing requirements for all countries listed.
discussion panel
Ty has consistently excellent IP expert groups, including:
