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When an inventor intends to file a patent application in a foreign country before he files the application in his own country, he may need to have a foreign filing license.
by Susanne Somersalo, Esq., Ph.D.
When an inventor intends to file a patent application in a foreign country before he files the application in his own country, he may need to have a foreign filing license. For a citizen of the United States a foreign filing license would be required when the inventor plans to file his first patent application as a national application in some other country than in the United States, for example in Canada or in European Union countries. Importantly however, filing an international patent application (PCT-application) as a first application does not require a foreign filing license as long as the United States is named as one of the dedicated countries in the application.
Basically by requiring a foreign filing license in situation described above the government reserves a right to monitor national interests in inventions made by a US citizen. A situation where the inventor may not be able to get a foreign filing license would be for example where the invention is related to national security.
Foreign filing license may become an issue also in situations where one of the inventors is a foreign national not living in the United States. As an example we can envision a situation where a research group in the United States collaborates with a research group in China. The Chinese research group consists of citizens of China and the U.S. research group consists of citizens of the United States. The Chinese inventors may prefer filing a patent application in China and the US researchers may prefer filing a patent application in the United States. Provided that both the Chinese and the US citizens contributed to the invention, the names of both the Chinese and the US inventors would need to appear in the applications in China as well as in the US. However, in order to be able to file the first application in China, the US inventors would need to have a foreign filing license from the U.S. Patent and Trademark Office. On the other hand, in order to file the first application in the United States the Chinese inventors would need to have a foreign filing license from the government of China.
Provided that the invention is not such that the U.S. government would regard it to include matters important for national security, the US inventors can get a foreign filing license relatively easily and fast. Receiving a foreign filing license in China may be more complicated and therefore in the above described situation it may be easier for the U.S. inventors to get the license from the USPTO and then file an application in China. Within one year of the filing date in China, the inventors can file a US application claiming priority of the Chinese application.
Situations where a foreign filing license would be required do not occur often, but every now and then they are relevant. In order to handle such situations correctly hiring an experience patent attorney is crucial.