bookoff-mcandrewsgoogleplus--whitelinkedin--whitevcard

TAKEAWAY: As companies expand internationally, they will need to consider foreign filing licenses. In order to preserve international rights, applicants should explore inventorship and the foreign filing laws of the country of invention early on in the disclosure and application preparation process.

U.S. law requires that inventors obtain a “foreign filing license” before filing foreign patent applications on inventions made in the United States. The reason the U.S. government requires a foreign filing license is to allow the government to determine whether the invention could be a threat to national security. Other countries have similar foreign filing license requirements for inventions developed domestically and/or applications by residents of that country. For information regarding other countries with restrictions visit the World Intellectual Property Organization’s website.
When an invention is made, applicants and inventors should be aware of where the invention occurred and where the inventors are residents. After noting these two facts, applicants will be able to determine what rule of law applies and where and how to file the first patent application for the invention.

How does an applicant obtain a foreign filing license for an invention made in the United States from the U.S. Patent and Trademark Office (USPTO)? The easiest way to obtain a foreign filing license is to file a patent application on the invention in the USPTO. The filing of the application in the USPTO will be considered to include a petition for license under 35 U.S.C. §184 for the subject matter of the application. The filing receipt or other official notice from the USPTO will indicate if a license is granted. If the initial automatic petition is not granted, a subsequent petition may be filed.

Alternatively, if the applicant does not want to file a patent application first in the United States, the applicant must file a petition for a foreign filing license in the USPTO with a legible copy of the material upon which the foreign filing license is desired. The USPTO will maintain this copy of the material as a measure of the foreign filing license granted.

There are remedies for failing to obtain a foreign filing license from the USPTO for inventions made in the United States. Applicants can file a petition for retroactive license under 35 U.S.C. §184. This petition must include a listing of each of the foreign countries in which the unlicensed patent application material was filed, the dates on which the material was filed in each country, a verified statement (oath or declaration) including (i) an averment that the subject matter in question was not under a secrecy order at the time it was filed abroad, and that it is not currently under a secrecy order, (ii) a showing that the license has been diligently sought after discovery of the proscribed foreign filing, and (iii) an explanation of why the material was filed abroad through error without the required license under §5.11 first having been obtained.