Some countries impose security restrictions that prevent patent applications being filed abroad. For example, applications for inventions made in the USA must be filed first in the USA. Failure to follow such regulations can lead to patents being declared invalid, or even to time in prison for you and your client.
Typically the restrictions on foreign filling can be satisfied by filing an application in the required country and waiting a prescribed period of time. If no secrecy order is put in place in that time you are free to file for the invention in other countries.
Clients may not want to wait that prescribed time before filing in other countries. They may even want to first file in a different country than allowed by the restrictions. In such cases a foreign filing licence can be requested.
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.g. the application specification, if it is ready) to the relevant authority. 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.
|Country||Foreign Filing Restricted?||Requirements for foreign filing|
|USA||Yes – all inventions made in USA||File application at USPTO and wait 6m; or request foreign filing licence|
|UK||Yes – only inventions for military technology or prejudicial to national security or the safety of public; applies to residents of the UK||File application at UKIPO and wait 6 weeks; or request foreign filing licence|
|Germany||Yes – applications containing state secrets (e.g. military/nuclear technology)||File application at DPMA and wait four months; or request foreign filing licence|
|France||Yes – all inventions made by French nationals or applicants with domicile or place of establishment in France||File application at INPI and wait five months (or four for EPO applications); or request foreign filing licence|
|Italy||Yes – only inventions concerning items useful for military defence, applies to residents of Italy||File at UIBM and wait 90 days; or request foreign filing licence|
|Netherlands||Yes – only inventions relating to defence, applies if applicant is national of the Netherlands or has residence or establishment in the Netherlands; only applies with respect to European patent applications||File at Dutch patent office and wait 3m|
|China||Yes – all inventions substantively made in China||Must request confidentiality examination (request assumed for PCT applications filed at SIPO)|