Foreign Filing License in a Nutshell

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Foreign filing licenses do not typically require much attention in daily practice since the license is routinely applied for and granted as a matter of course in new application filings. However, in certain situations ignoring the license may cause severe damage. 35 U.S.C. § 184 states that a person shall not file or cause or authorize to be filed a patent application (among other things) in any foreign country unless six months have passed since the United States application was filed unless otherwise authorized by a license obtained from the Commissioner of Patents, i.e., unless a foreign filing license is received from the United States Patent and Trademark Office (USPTO). A purpose for this rule is that it allows the U.S. government to protect national security by approving or disapproving the export of sensitive technologies, such as technology associated with warfare, nuclear, or security-related measures.

If a license is not obtained, the result can be painful. For example, an applicant can have its patent declared invalid if the license is not procured and the applicant files or assists in filing the application in a foreign country. By way of further example, if an applicant files a foreign application within six months of filing a counterpart United States application without first obtaining the foreign filing license, the applicant may lose the right to file the application in foreign countries. Additionally, if convicted, the applicant can be fined not more than $10,000 or imprisoned for not more than two years, or both. However, if a proper license is not timely obtained, one may petition the USPTO for a retroactive foreign filing license, provided the failure to obtain the license is from error without deceptive intent.

The main factors used to determine whether obtaining the license is required are: (1) where the application is filed; and (2) the location of the inventors. If a U.S. inventor decides to file his or her invention in another country, he or she needs to obtain the license before filing the application. The requirement applies also when filing a PCT application, when the application is filed with the World Intellectual Property Organization (WIPO) or with a foreign receiving office. What if one of the inventors is in U.S. and the invention is filed abroad? Assume that a Singapore company wants to file an invention and an inventor in New York is involved, does the company need to get the license? It depends on where the invention is made. If the invention is made in Singapore, the license is not required. If the invention is made in the United States., the applicant should obtain the license before filing.

Outsourcing patent work to a foreign company or sending invention materials to a foreign office for a review does not require obtaining the license. However, disclosing information to a foreign entity may be subject to export control regulations, such as the International Traffic in Arms Regulation (ITAR) and the Export Administrations Regulations (EAR). ITAR and EAR are not discussed in this article, but they deserve attention when sensitive technologies are involved.

Recently, the USPTO started accepting international design applications (IDAs) under the Hague system. The Hague system, administered by WIPO, enables obtaining protection for up to 100 industrial designs in 64 territories in a single application. No national stage filing is required. However, the requirement for obtaining the license still applies. An applicant can file an IDA directly with WIPO or indirectly through the USPTO. Filing the IDA directly with WIPO requires obtaining the license. If the IDA is filed indirectly through the USPTO, the USPTO reviews the IDA for the license and applies a fee as necessary.

As of today, 28 countries (including the U.S.) have regulations related to foreign filing licenses. WIPO maintains a page summarizing the requirements around the world. If an inventor from these countries wants to file a U.S. application, the inventor needs to obtain a proper license from the inventor’s home country.

Applicants, particularly those looking to initially file in another country and/or in a non-U.S. receiving office when pursuing a PCT application, should be sure the proper actions have been taken to obtain the necessary foreign filing licenses before pursuing such applications. If they have any questions related to their foreign filing strategy, they should consult with a patent attorney to consider the implications of the rules related to foreign filing licenses.

Maximizing the protection and value of intellectual property assets is often the cornerstone of a business's success and even survival. In this blog, Nutter's Intellectual Property attorneys provide news updates and practical tips in patent portfolio development, IP litigation, trademarks, copyrights, trade secrets and licensing.

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