Foreign filing license of patent

In general, these are the steps for filing a Petition for Retroactive Foreign Filing License: A retroactive license may be sought if an unlicensed foreign filing has occurred through error. However, the requirements of 37 CFR 5. The showing of facts as to the nature of the error should include statements by those persons having personal knowledge of the acts regarding filing in a foreign country and should be accompanied by copies of any necessary supporting documents such as letters of transmittal or instructions for filing.

The acts which are alleged to constitute error should cover the period leading up to and including each of the proscribed foreign filings.

Failure to renew the petition within the set time period will result in a final denial of the petition. The showing of facts as to the nature of the error should include verified statements by all those persons responsible for or having personal knowledge of the acts regarding filing in a foreign country and should be accompanied by copies of any necessary supporting documents such as letters of transmittal or instructions for filing.

A foreign filling licence grants permission to file applications for a given invention in foreign countries. Generally this involves sending a description of the invention e.

The relevant authority will assess whether the invention is important for national security, and if not will grant a licence. Each state imposes different rules on who the security restrictions apply to, and what types of invention they cover. The restrictions may apply to all inventions made within a country, all inventions made by residents of that country, or all inventions made by nationals of that country wherever they reside, and wherever the invention was made.

The restrictions may apply to all types of invention, or just those related to matters of defence and national security. The table below shows the filing restrictions in selected countries, and how to obtain permission to file abroad. If you need to obtain a foreign filing licence, or are unsure if you need one, please contact your normal Barker Brettell attorney.

Such request may be made on an expedited basis as well. Because of this, in situations where a first filing may legally be required in the United States as well as a foreign country e. Regardless, having proper knowledge is the first step in circumventing potential problems. In the countries where foreign filing licensure is currently required, the basis for the requirements may generally be broken into three categories: where the inventive activity occurred; the nature of the subject matter to be disclosed e.

Provided below is a summary of the filing restrictions by country based upon the category into which they fall. Note that multiple countries require foreign filing licenses based upon multiple categories. Further, it is important to note that, in many instances, the requirement for a foreign filing license only applies to patent applications including disclosure that may be of interest for national defense or security or military applications, in particular.

Armenia — Requires that a patent application for an invention created in Armenia must be filed in Armenia before filing abroad. China — Requires that any unit or individual that intends to apply for a patent in a foreign country for an invention accomplished in China shall submit the matter to the patent administration department for confidentiality examination. The requirement may be met by filing of an application in China or receiving clearance from the patent administration after obtaining the confidentiality examination.

Cyprus — Requires that a patent application for an invention created in Cyprus must be filed in Cyprus before filing abroad. Kazakhstan — States that submission to foreign countries of an application for an invention created in Kazakhstan may be carried out three months after the date of submission of the application to the patent office or earlier, after completion of the review in relation to whether the application includes state secrets.

Spain — Requires that a patent application for an invention created in Spain must be filed in Spain before filing abroad. The law, however, does provide for obtaining authorization from the Spanish Patent and Trademark Office to first file abroad. Russia — Requires that a patent application for an invention created in Russia must be filed in Russia before filing abroad.

United States — Requires that a license must be obtained before filing any application in a foreign country if the invention was made in the United States. A license may be granted upon filing of the appropriate petition and may be obtained retroactively with an explanation of why the material was first filed abroad through error.

Azerbaijan , Germany , and Luxembourg all have restrictions based solely on the presence of state secrets. They each require that patent applications containing secrets relevant to the specific state must first be filed in that state prior to any filings abroad. In India, the requirement may be waived after receipt of a written permit following submission of the proper request.

The following countries have nuanced variations of similar requirements. Belarus and France have requirements for applications by natural or legal persons having a residence or principal place of business in the respective country.