Foreign Filing License Requirements in the United States and Abroad

August 10, 2018

Hamilton Brook Smith Reynolds

By: David Habib and James M. Smith

Many countries have a first filing requirement under which patent applications must be filed first in that country before filing in any other country. Each country has its own factors or restrictions under which first filing requirements must be met. These factors/restrictions include whether the inventor is a national or citizen of a country, whether the inventor developed the invention in the country, or whether the inventor is a resident of a country. Some countries require a domestic first filing for inventions made in the country. Some countries require a first filing to be domestic when the inventor is a resident of the country. Some countries require a first filing to be domestic when the inventor is a national of the country. Certain countries require a foreign filing license when the invention or technology at issue has national security implications or military applications.  (International Applications and National Security Considerations, World Intellectual Property Organization, http://www.wipo.int/pct/en/texts/nat_sec.html).

Some countries have a procedure for requesting permission to make the first filing of a patent application in another country, serving as an exemption to a first filing requirement. Several countries require that the first filing be domestic, with no option for obtaining a foreign filing license. However, even if presented with the option of obtaining a foreign filing license, the procedure can differ significantly in terms of cost and delay depending on the jurisdiction in which the license is sought.  (Sarah Matheson et al., Working Guidelines: Inventorship of Multinational Inventions, International Association for the Protection of International Property, 2015).

Under United States law, “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.” 35 U.S.C. §184(a). A license shall not be granted with respect to an invention subject to an order issued by the commissioner of patents pursuant to secrecy provisions (35 U.S.C. §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 §181.

Complications arise in cases of joint inventors residing in different countries with different restrictions with respect to foreign filing requirements. With an increasing number of multinational inventions, procedural issues have become increasingly problematic. Based on inventorship and where inventions are made, determining reasonable avenues for compliance with first filing and foreign filing license requirements will ensure more efficient patent prosecution practices across the globe.

Countries with first filing requirements include Armenia, Azerbaijan, Belgium, Bulgaria, China, Cyprus, Denmark, Finland, France, Germany, Greece, India, Israel, Italy, Kazakhstan, Luxembourg, Malaysia, Norway, Portugal, the Republic of Korea, Russia, Spain, United Kingdom, the United States of America, and Vietnam.

Overview

August 10, 2018

Hamilton Brook Smith Reynolds

By: David Habib and James M. Smith

Many countries have a first filing requirement under which patent applications must be filed first in that country before filing in any other country. Each country has its own factors or restrictions under which first filing requirements must be met. These factors/restrictions include whether the inventor is a national or citizen of a country, whether the inventor developed the invention in the country, or whether the inventor is a resident of a country. Some countries require a domestic first filing for inventions made in the country. Some countries require a first filing to be domestic when the inventor is a resident of the country. Some countries require a first filing to be domestic when the inventor is a national of the country. Certain countries require a foreign filing license when the invention or technology at issue has national security implications or military applications.  (International Applications and National Security Considerations, World Intellectual Property Organization, http://www.wipo.int/pct/en/texts/nat_sec.html).

Some countries have a procedure for requesting permission to make the first filing of a patent application in another country, serving as an exemption to a first filing requirement. Several countries require that the first filing be domestic, with no option for obtaining a foreign filing license. However, even if presented with the option of obtaining a foreign filing license, the procedure can differ significantly in terms of cost and delay depending on the jurisdiction in which the license is sought.  (Sarah Matheson et al., Working Guidelines: Inventorship of Multinational Inventions, International Association for the Protection of International Property, 2015).

Under United States law, “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.” 35 U.S.C. §184(a). A license shall not be granted with respect to an invention subject to an order issued by the commissioner of patents pursuant to secrecy provisions (35 U.S.C. §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 §181.

Complications arise in cases of joint inventors residing in different countries with different restrictions with respect to foreign filing requirements. With an increasing number of multinational inventions, procedural issues have become increasingly problematic. Based on inventorship and where inventions are made, determining reasonable avenues for compliance with first filing and foreign filing license requirements will ensure more efficient patent prosecution practices across the globe.

Countries with first filing requirements include Armenia, Azerbaijan, Belgium, Bulgaria, China, Cyprus, Denmark, Finland, France, Germany, Greece, India, Israel, Italy, Kazakhstan, Luxembourg, Malaysia, Norway, Portugal, the Republic of Korea, Russia, Spain, United Kingdom, the United States of America, and Vietnam.

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