For the half-year to 30 June 2014, the IPKat's regular team is supplemented by contributions from guest bloggers Alberto Bellan, Darren Meale and Nadia Zegze.

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Thursday, 8 September 2011

Foreign filing licences at ten minutes to midnight

Most patent attorneys have to file applications from time to time with one or more foreign inventors. This leads to a practical problem if you know little or nothing about the patent laws of the inventor's home country.  Why? Because several countries have restrictions on inventors filing abroad without permission.  If you are faced with a non-negotiable deadline - e.g. it's ten minutes to midnight on the day of disclosure of an invention, you need to know if the filing you are about to make is likely to land your inventor in hot water.

35 USC 184
An inventor may be under an absolute obligation to file first in his or her home country (let's call it Freedonia), or may be permitted to file abroad first provided that a foreign filing licence has been obtained in advance.  Or if you're in luck, you may learn that Freedonia is generous with its technological secrets and takes no interest in where its inventors choose to file.

Some countries only impose restrictions on inventions with military or nuclear importance, while others take an equally dim view if a novelty musical toothbrush is the subject of a patent application filed abroad without permission.

Ernie forgot to check
What happens if you get it wrong? Some countries will allow you to retroactively correct a genuine mistake if you file abroad without permission, while in others there is no pardon for the crime ... and crime it most certainly is: the law will typically provide for both an eye-watering fine and harsh prison sentences for the hapless inventor (15 years in some jurisdictions), not to mention possible invalidation of any subsequently filed Freedonian patent application.

Advice from a competent Freedonian patent attorney is the safest bet, providing that you're not up against an urgent deadline, and time zones permit, and you have confidence that you are indeed asking someone competent.

If for some reason you can't contact a Freedonian colleague, information is surprisingly hard to find. The Freedonian Patent Office website, for instance, may give meticulous detail on all of the charming local filing requirements, e.g. forms notarised to apostille, drawings on Bristol board  (remember that?), and a triple-spaced specification printed on lemon-coloured rice paper in 12.5 point Comic Sans font.  But many patent office and patent attorney websites carry no guidance on whether local laws allow you to bypass their services entirely by filing abroad.

This Kat has been unable to find any comprehensive listing of all the countries that do have foreign filing restrictions or licence requirements, and perhaps more useful, a "whitelist" of the very many countries that have no such restrictions.  The latter might be more useful because if your only foreign inventor is (say) Irish and you can see from a reliable list that Ireland has no foreign filing restrictions - and this Kat can reassure you that Ireland has no such restrictions for its nationals or residents - you're home and dry and can file where you please subject to your local laws.

Some online resources list the better known countries that do have some restrictions, with the USA, UK, France, Germany, China, South Korea, India, Canada and New Zealand all being mentioned as having some level of restriction, though the requirements vary widely. Some of the "whitelist" countries with no restrictions mentioned on the same listings include Japan, Mexico, Taiwan and Australia.

That brief summary has not been verified, and it leaves unmentioned eight of the G20 nations, most of the EU, and the vast majority of the WTO countries - an enormous knowledge gap (represented by the white area on the map below). Enormous for an attorney under pressure perhaps, but surely our readers know of a more comprehensive listing, or collectively the IPKat community can crowdsource a list of which countries do and don't have a foreign filing licence requirement?
Red: restrictions. Green: no restrictions. Blue: very wet. Help colour the map
If you can enlighten the IPKat with either (i) a link to a free, online resource having comprehensive information, (ii) a brief indication of the foreign filing restrictions for a country in which you have expert knowledge, or (iii) a correction to the map above, please do so either in the comments below or by emailing the IPKat with the subject line 'Foreign Filing', and a subsequent post will collate and share the knowledge, and may serve on some future date as a ready reference for despairing attorneys and applicants facing an imminent disclosure with a multinational group of inventors.

A brief history of Freedonia here
Not to be confused with Fredonia here

22 comments:

David said...

Sounds to me like a job for a wiki page, with entries allowed only with properly sourced and hyperlinked references. Blog posts are so unwieldy...

By the way, are you assuring us that Ireland does not have any restrictions, or that Ireland does not have no restrictions? It's not clear to me.

David Brophy said...

Thanks David. I've edited to clarify that Ireland has no restrictions, it was ambiguous.

I'll have a think about a wiki; my intention was to see what comments came, and when they peter out, to post a listing, but I agree a wiki would be more robust.

David said...

You are welcome to use the ukpatents wiki if you like. It's set up so that only members can edit pages.

Thanks for the Ireland clarification.

Judith_IP said...

While China is restricted, in that you lose the right to later file in China, there appears to be no other effect.

Anonymous said...

These restrictions are particularly annoying in that they can easily lead to a Catch-22 situation when there are co-inventors from two different countries, or even a single inventor residing abroad. If both countries have such restrictions, and no provision for foreign filing licences, you can easily find yourself in a position in which you can't in principle file in either country!

In fact, in most countries, and certainly in those European countries which apply foreign filing restrictions for all inventions, this has very little to do with defence, and everything to do with protecting the business of the local patent attorneys...

Anonymous said...

Almost every country in the world has restrictions at least in relation to military and nuclear technologies. See for example the Wassenaar Arrangement (wassenaar.org)- a multinational agreement limiting both the sale of arms and the techncial information required to manufacture arms. The Austraila Group (australiagroup.net) is a similar international arrangement in respect of the export of information relating to the manufacture of chemicals and biological agents that could be used offensively.

Anonymous said...

It is important to remember (and hence avoid both you and your client ending up in prison) that when it comes to patent specifications for military and other 'dual use' (military/civilan) products, the 'export' of patent specifications will be prohibited under arms export control laws, even if the patent law of the country concerned has no explicit provision on first filings.

Anonymous said...

It is wholly false to say that countries do not have restrictions. When it comes to miliary and dual use technologies, if the local patent office does not provide a mechanism for vetting such technology then you will certainly require an export licence to disclose your patent application to a foreign attorney /IPO.

Anonymous said...

This is presumably an issue where the inventors are the co-applicants, and less of an issue where the application is made in the name of an employer or assignee?

Anonymous said...

#Anonymous (09:28 AM). I've heard there is a treaty currently being discussed for sorting out this very issue.

#Anonymous (10:22 AM). US law is a problem: the right to file a patent remains with employee, regardless of what their contract of employment or local law says.

Svetlana Kazmina, Russian and Eurasian patent attorney said...

It might be interesting for blog readers that Russia has the similar restrictions as many other countries. An applicant may file a patent application for an invention abroad only after 6 months period expiration since the date of application in Russia and only if an applicant has not been informed that the information contained in the application comprises a State secret within this period. A foregn application may be done even earlier only by a special request of an applicant and after followed check up of an application. The case of co-inventing is not foreseen by law in details. PCT or Eurasian application of Russian applicants are regarded on the same basis if they were filed through the RUPTO (ROSPATENT)

Anonymous said...

I believe that the information should also distinguish national laws that apply to inventor's/applicant's nationality or to their residency at the time of creating the invention, thus further complicating the collation of information!

Anonymous said...

Most of these provisions relate to inventions made in the national territory, or by nationals or residents of that country.

With respect to arms export regulations, it is important to note that this is a different issue. In the case proposed by the Kat, if you, as a non-Freedonian patent attorney, have heard of the invention, and it relates to such restricted material, the inventor has already broken the law. This is about foreign filing restrictions, and the troublesome fact that in many countries they may even apply when the invention has absolutely nothing to do with military or dual use technologies...

TJ said...

It's a nice idea, but it would be a brave or foolish patent attorney who relied on a crowd-sourced whitelist to advise his clients. I can see a blacklist being rather more useful however.

Anonymous said...

One of our unnamed brethern mentioned a draft treaty. I think they are referring to the following, from the British Ministry of Defence website:

'The convergence of the views of the six nations on the IA draft relating to Patent Security is near to being finished. The purpose of this arrangement is to harmonize the current regulations of the LoI countries relating on patent registration in order to eliminate national borders between LoI nations in the handling of patent applications. This document will be signed at the NADs level.'

The six 'LoI countries' are apparently FR, DE, ES, GB, IT and SE.

Roufousse T. Fairfly said...

The booklet "National Relating to the EPC" lists national filing obligations for Europe. I think this source is more to be trusted than some wiki, even though it is not a primary one. It's not just useful for answering a trick question or two at the EQE.

If the application comes from outside EP-Land, the responsibility would lie with the correspondent representative.

Singer+Stauder helpfully hints under Art. 75 that national first filing requirements are not in the EPO's jurisdiction, and therefore not enforced.

Are these obligations really enforced? One can very easily build inextricable situations from the requirements listed in the EPO publication.

Canada is painted red on your map, however applicants from there typically file their first applications as US provisionals.

David said...

I see that, apart from Mr Fairfly, nobody has provided any links to sources of information. This would be a requirement of any wiki page. I have set up a provisional one here based on information confirmed so far. If anyone would like to add further information, please go ahead.

Anonymous said...

When I worked in industrial practice, we sometimes had to file classified applications in the name of joint UK and US applicants, and it wasn't normally a problem. We simply asked both patent offices for permission to file first in the other, and filed according to who replied first. More of a problem was where the sole inventor was not a UK citizen and the invention got classified "UK Eyes only": how do you then complete the oath and declaration required to file in the US?

Most secret inventions will in practice be filed by applicants and/or attorneys who are familiar with the rules [both written and unwritten] relevant to processing of classified applications. The number of inventions made by private applicants that would attract a security classification must be small indeed. I suspect that any such applications by private applicants today might meet the same fate that Hedy Lamarr and George Antheil's invention of jam-proof spread spectrum communications met in the 1940's: no-one would take them seriously.

If you did find yourself in the unlikely situation of dealing an invention from a private applicant that did turn out to be subject of a secrecy order, you would not be able to continue dealing with it unless you yourself had the necessary security clearance and the necessary security provisions in place for the handling and storage of classified documents anyway. I suspect most people's exposure to secret applications would be purely academic as part of their studies for professional examinations.

Anonymous said...

I suspect most people's exposure to secret applications would be purely academic as part of their studies for professional examinations.

So I thought, until I recently found myself in one such situation. It was awkward, as I'm not a national of the country where I currently practice...

Anonymous said...

Is the information in the Brown Book? The issue of the export of technology needs to be considered in addition to patent filings, something that has been the subject of heated discussions on linkedin IP groups (US v India export of IP work).

The UK IPO are much faster than the USPTO for issuing a foreign filing licence so normal procedure is to obtain UK licence and file in US.

The solution is to stop leaving everything to the last minute and plan accordingly.

David said...

Thank you to those who have provided linked information relating to Spain and Singapore on this page, following my start of UK, USA and EPO states in general. More would be welcome!

Komodo Dragon said...

See IP Komodo's link to ASEAN rules http://ipkomododragon.blogspot.com/

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