Posts Tagged: "foreign filing license"

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.

Foreign Filing Requirements Part II – Comparing Popular Patenting Jurisdictions

In Part I of this series, we provided an overview of foreign filing restrictions for cross-border inventions around the world. For a deeper examination, we will narrow our focus to some of the most common countries for filing. The United States, China, and India are among the most popular patent filing venues in the world. While all three countries require a Foreign Filing License (FFL) before filing abroad or otherwise first filing in the home country, the specific requirements vary.

Beware of Foreign Filing License Requirements

Most U.S. patent practitioners are keenly aware of the foreign filing license requirement for filing of U.S. patent applications abroad. Since it is common for U.S. based companies to file a U.S. priority patent application and take advantage of the one-year grace period for foreign filing, a foreign filing license is typically issued without much thought to the matter. Given the propensity for international companies and many universities to routinely carry out inventive activities in multiple countries by inventors of varied citizenships, the opportunities to run afoul of foreign filing license requirements is of growing concern, and this concern extends well beyond the walls of the U.S. Patent and Trademark Office (USPTO).

PCT Basics: Understanding the International Filing Process

The appeal of the PCT process is that it enables patent applicants to file a single patent application and have that single, uniform patent application be treated as an initial application for patent in any Member Country. This single, uniform patent application is what is referred to as the international application. Filing an international patent application to start the patent process can frequently be a wise move if you are contemplating securing patent rights in multiple countries. It is, however, important to understand that obtaining international patent protection is not cheap. It is also important to understand that the international patent application you file will not mature into an international patent.