Patent applications are often filed at the last minute. Priority considerations force the application to be filed expeditiously to avoid statutory bars or catastrophic public disclosure issues. But filing too quickly—or in the wrong country—may cause the eventual patent to be invalid for failure to obtain a foreign filing license.
What is a Foreign Filing License?
A foreign filing license is a communication from the U.S. government granting the applicant the right to file in a country other than the United States. These licenses are granted only after the Patent Office determines the invention does not relate to subject matter that would be a threat to national security as set forth in 35 U.S.C. § 181. As an extreme example, a patent application directed to a nuclear weapon should not be filed in a foreign patent office because it would explain to the foreign country how to build a nuclear weapon.
But what if you're not in the nuclear weapons business? Unfortunately the requirement for a foreign filing license applies to every type of invention. Regardless of the invention, the resulting patent will be deemed invalid if the application is filed in another country prior to the grant of a foreign filing license. It is therefore critical to first file in the United States and then file elsewhere only after receiving the foreign filing license (typically provided with the filing receipt just a few weeks later). Or, the applicant can file a PCT application in the U.S. receiving office and nationalize in the PCT member countries within the allotted time period.
An important consideration is that a foreign filing license is required only for inventions first made in the United States. Many other countries have similar rules. An invention made in China must first be filed as a patent application in China, for example, and only afterwards filed in the United States. It is important to determine where the invention was first made to then determine where to first file the application.
What if You File an Application Without a Foreign Filing License?
Mistakes happen and applications are often filed abroad prior to the issuance of a foreign filing license. If left uncorrected, the patent would be invalid. But all is not lost—the PTO permits the applicant to petition for a retroactive foreign filing license to effectively reverse the error. The requirements for such a petition are (a) a listing of the countries in which the application was filed and the dates of filing; and (b) a verified statement that (i) the invention was not subject to a secrecy order, (ii) the retroactive foreign filing license was diligently sought immediately after the discovery of the error; and (iii) the foreign filing was done through error and without deceptive intent.
By far, the most onerous portion of the petition is the showing of error and no deceptive intent. The Patent Office is quick to dismiss petitions that provide "conclusory statements" and will only grant a petition that is supported by substantial facts. Why was the error made? Does the law firm have a policy that prevents this issue from happening? Why did the attorney not contact the docket clerk before instructing the foreign associate to file? Was the applicant itself aware of the issue?
The factual record must also be supported by documentation. Often times, it may be necessary to have the applicant or attorney sign an affidavit. It may also be necessary to provide emails between the attorney and client with important information redacted. It is, to be blunt, a pain.
At bottom, the Patent Office makes the petition process difficult because they want to prevent lawyers from using the process as a default solution. Perhaps the Patent Office scrutinizes these types of petitions because it believes attorneys were well aware of the requirement to wait for a foreign filing license but ignored it out of convenience. It is therefore best to carefully analyze whether a foreign filing license has been granted prior to filing a patent application—the alternatives are not kind.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
