Patently Strategic Podcast: License to File

Foreign filing licenses – they’re surprisingly sneaky and easy to overlook, but can come with significant consequences if you do. Many countries, including the United States, require inventors to receive special permission to file with patent offices outside of the inventor’s …or invention’s… country. A foreign filing license is a government issued document that represents this permission for inventors and companies to file in foreign countries. Failing to receive this permission can come with serious ramifications including fines, patent revocation, and even imprisonment!

Why so serious? Well, like with most matters of foreign export compliance, it comes down to each nation’s strong desire to protect its own security and economic interests. Allowing ideas to cross borders comes with the risk of the unauthorized exportation of technologies and sensitive information that could have implications for military applications, national security, and state secrets.

But whether it’s a grip for a golf club or a new gadget worthy of a sinister Bond villain laugh, there are oftentimes no technology category exceptions. For many countries with foreign filing license requirements, all patent applications destined for international travel – whether utility, plant, or design – must all receive a foreign filing license before being filed abroad.

Episode Overview 

The topic is Filing… Foreign Filing. In this month’s episode, we’re bringing you along for a tale of international mystery and intrigue and into the clandestine world of foreign filing licenses. Ty Davis, Patent Strategy Associate at Aurora, along with our all-star patent panel, discusses:

• The three main categories of filing license requirements
• Strategies for data collection and a decision matrix for navigating potential conflicts
• Example walkthroughs of international filing conflicts and their resolutions

The World is More Than Enough

According to our research, there are at least 35 countries with foreign filing requirements – and according to WIPO, this includes 30 of the Patent Cooperation Treaty (PCT) participants. It’s hard to imagine an international strategy that would not be impacted with notables on that list including the likes of the United States, China, India, Germany, and the UK.

Further complicating all of this is the strong potential for jurisdictional conflicts. Requirements for filing licenses can vary significantly from country to country and may even conflict in some cases. Some countries base their requirements on inventor or applicant citizenship, residency, or place of business. Other countries are more concerned with the location of inventive activity. Many of these countries require inventions to be filed first with their respective patent offices, but what if inventors reside in multiple jurisdictions, each with first file requirements? An idea co-conceived in the United States and India on a teleconference is now subject to two competing foreign filing jurisdictions. With a rise in distributed workforces, teleconferencing, and outsourcing – both inventors and inventive steps – will more and more frequently be residing and occurring across legal boundaries. The lines of innovation are rapidly blurring, but the patent laws of each country must still be obeyed.

A Quantum of Solace

When dealing with foreign agencies, foreign intellectual property jurisdictions, and the wide array of accompanying complexities, it might feel like you need the “Double O” designation to properly execute a foreign filing procedure, but with the stepwise approach of determining requirements, identifying conflicts, and then systematically resolving the conflicts, you can reduce the complexity down to a repeatable formula.

 The decision data can be reduced to the following:

• Who? – Inventor(s) Citizenship/Residence and/or Place of Business
• Where? – Location(s) of Inventive Activity
• What? – Does the invention pertain to a military application, national security, or a state secret? This is particularly where the more serious penalties can really kick in for not getting this right.

The data above is then used to identify what countries are involved. When it comes to intellectual property jurisdictions and foreign filing license (FFL) requirements, largely, there are three categories of countries:

1. No FFL requirements. Notables include Japan, Hong Kong, Mexico, South Africa, Switzerland, and Thailand.
2. Inventor/Applicant location based. FFL requirements focus on citizenship, residency, or place of business for the inventor/applicant. Notables include Belgium, India, Israel, Italy, and the United Kingdom.
3. Inventive activity location based. FFL requirements focus on the geographic location of the inventive activity. Notables include China, Germany, Russia, Spain, and the United States.

Additionally, two sub-categories exist. For both types of countries with foreign filing license requirements, some require licenses for all types of subject matter, regardless of sensitivity, while others are only concerned with inventions pertaining to national security, state secrets, and/or military applications.

Who? – Inventor(s) Citizenship/Residence and/or Place of Business

When gathering the data required for a foreign filing procedure, it is important to identify all parties involved. These parties may include inventor(s), assignees, and applicants. Once the citizenship, residential, and place of business data is collected from the parties involved, the pertinent countries can be identified. This location data becomes especially important for identifying countries from the second category.

Where? – Location of Inventive Activity

Countries from the third category are jurisdictionally concerned with the inventive activity location. In crafting a comprehensive foreign filing strategy, it is crucial to discern where the inventive activity occurred. Keep in mind that inventive activity can occur little by little, in portions, and even on virtual platforms. For example, a Chinese inventor, in China, can collaborate with an American inventor, in the US, over a video conference. This collaboration may result in some portion of inventive activity occurring in China and some portion of inventive activity occurring in the US. This results in the inventive activity, as a whole, being subject to the jurisdiction of both the US and China.

What? Does the Invention Pertain to a Military Application, National Security, or a State Secret?

This third overarching question is arguably the most important in regard to the severity of ramifications. Some countries carry stiff penalties, especially for the willful disclosure of this type of material, including fines or even imprisonment. Thus, proper foreign filing procedures are crucial with this type of material. Additionally, some countries carry the 2nd or 3rd categories of jurisdictional requirements only when the invention pertains to this type of material. For example, if the inventive activity of a new and useful ammunition was performed by an Israeli resident, the application would be subject to the foreign filing license jurisdiction of Israel.

From Russia with Love: Conflicts

If issues arise in your foreign filing strategy, it is always best to refer to an associate or intellectual property firm from the country(s) in question. With that said, example conflicts are listed below:

• Two or more inventors/applicants having different citizenship/residence with countries from the 2nd category
• Two or more inventors performing inventive activity in two or more countries from the 3rd category
• Inventor(s) with citizenship/residence in a country from the 2nd category but conceiving the invention or inventive portions within a country from the 3rd category

Live and Let File: Potential Conflict Solutions

So, you’ve found yourself in a jurisdictional conflict between two or more countries. Luckily there may be a few applicable options:

• Does a conflicting country(s) offer a foreign filing license without filing an application? With time permitting, requisite documents may be filed with the patent office(s) of the country(s) offering a foreign filing License without filing an application. Once the foreign filing License is received from that patent office(s), file the application with the other jurisdictionally involved patent office.
• Can the invention be divided into respective inventive portions for the jurisdictionally involved countries? If so, applications for the inventive portions can be filed at the respective patent offices. In some countries, it may then be possible to pursue or receive a foreign filing license for those inventive portions and pursue them further in a PCT and/or National applications.
• Confer with counsel from conflicted countries. This is considered best practice and one may consider this with any solution selected. Patent laws are complex and may vary widely between countries. Thus, it may be good to have local knowledge on your side.

Gadgets, Gizmos, and Gear

No good spy tale would be complete without some cool gadgets and gizmos, so we’ve had Aurora’s Q Division working on a table that visually outlines the research we’ve done on the countries you may need to consider. You can find and download a copy here. Note: This table is for reference purposes only – intellectual property laws of each country are subject to change, and as such, the present table may not reflect the current state of all listed countries foreign filing requirements.

Discussion Panel

 Ty is joined by our always exceptional group of IP experts, including:

• Ashley Sloat, President and Director of Patent Strategy at Aurora
• Kristen Hansen, Patent Strategist at Aurora
• David Jackrel, President of Jackrel Consulting