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Considerations for International Inventions – Foreign Filing Licenses | Patently-O

| Philip M. Nelson

Guest Post by Brent M. Dougal and Philip M. Nelson on Patently-O. Dougal and Nelson are Partners in our Orange County office.

In today’s age of international commerce, product development often takes place on an international scale.  Many companies have design centers in multiple countries, with design teams that span the globe.  What are the patent implications if an invention is developed in China or some other country outside the U.S. and the company wants to obtain international patent protection? 

U.S. law requires that inventors obtain a “foreign filing license” before filing foreign patent applications on inventions that occur in the U.S.  This allows the government to assess, for example, whether the technology could threaten U.S. national security.  Some other countries such as Spain (Article 119-122), Italy, and India also require foreign filing licenses for inventions developed domestically but for which foreign patent protection is sought.  In countries that provide foreign filing licenses, these licenses generally do not issue quickly or efficiently.  Thus, it is advisable to file first in the country of invention to avoid the delay and difficulty of obtaining the foreign filing license. (The US and Canada are notable exceptions to this general rule.)

By contrast, other countries, such as China (Article 20) and Vietnam, have no provisions for obtaining a foreign filing license. These countries require that patent applications on domestic inventions be filed first domestically.  In China, domestic inventions include all inventions occurring in China, whether or not funded by a foreign company.  Failure to file in China may lead to invalidity of a corresponding Chinese application and criminal penalties if the invention relates to security or other vital state interests.  One way a U.S. or English-language company can deal with this requirement is to file a Patent Cooperation Treaty (PCT) application in English with the Chinese Patent Office as the PCT receiving office.

Canada has one of the most unique foreign filing laws.  There a foreign filing license is only required—and indeed, only available—if the inventor is an employee of the Canadian government. Instead of review by a separate government entity as in the U.S., Canadian government employees must obtain permission of the minister of his or her department. 

Other countries, including the U.K. and Germany, have limited restrictions related to national security and military applications (requirements for EPO countries can be found here).  Thus, a foreign filing license is only required for select technologies.

The table below summarizes many of the current restrictions, breaking down the listed countries into four main groups:

 

 

Foreign Patent Filing Restrictions

None

Limited to National Security and Military Applications

License Required 

First Filing Must be Domestic

Countries

Argentina
Australia
Austria
Brazil
Hong Kong
Indonesia
Ireland
Japan
Liechtenstein
Mexico
Monaco
New Zealand
Philippines
Poland
Portugal

South Africa
Sri Lanka
Switzerland
Taiwan
Thailand
Venezuela

Belgium
Czech Republic
Denmark
Finland
Germany
Israel
Korea (Article 41)
Luxembourg
Netherlands
Slovak Republic
Sweden
United Kingdom

Canada1
France2
India
Italy
Malaysia
Singapore
Spain
United States

 

Belarus
China
Cyprus3
Greece3
Hungary3
Kazakhstan
Russia
Vietnam4

 

1 Only required for government employees.

2 Only applies where inventors are French nationals or the company’s principle place of business is France (Article L. 614-18, 614-20). A European patent application can also be filed as the first filing without obtaining a foreign filing license. 

3 First filing must be domestic where inventors are nationals (and in some cases permanent residents).

4 Also requires Vietnamese inventors without an obligation to assign to file first in Vietnam.

 

Though only a limited number of countries have foreign filing restrictions, those that do include many significant markets, not to mention the world’s most populous countries.  As companies continue to expand internationally, their attorneys will need to take an international perspective.  In order to preserve international rights, attorneys should explore inventorship and the foreign filing laws of the country of invention early on in the disclosure and application preparation process.

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This discussion is provided without guarantees and is not to be considered legal advice. We highly recommend seeking legal counsel in the country of invention.  The information has been compiled with the assistance of foreign associates from various countries, with some independent verification.

Any invention which may have a military application or could be considered important to national security is likely restricted not only by a country’s patent laws, but also by export laws, which are not addressed here.  We highly recommend seeking legal counsel in the country of invention.