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NON-RESIDENTS OF THE UNITED
STATES FILING IN THE UNITED STATES
&
RESIDENTS OF THE UNITED STATES FILING ABROAD
This page provides information for both foreign residents, who desire
to file a patent application in the United States, and U.S. residents, who
desire to file a patent application in a country other than the United
States.
FOREIGN FILERS: NOT A RESIDENT OF THE UNITED
STATES?
 Filing for a Patent in the United States.
Anyone in any country may file for a patent in the United States of
America. The United States places no importance on citizenship or
residency for inventors desiring a patent. That, however, does not
end the inquiry for a non-U.S. citizen or non-U.S. resident, unless you
are seeking a U.S.
National Stage application under the PCT.
HOME COUNTRY LAWS
Law of the Country of Residence. A number of
countries require that any resident who invents something in that country
but wants to file a patent application in another country, first obtain
permission from the country of residence.
The United States is one such country (see discussion
below) and others may include:
- Germany, (Section 52 of the German Patent Act);
- France, (Articles L. 614-18 and 614-20 of the French Patent
Law);
- United Kingdom, (See example
below); See a special U.S. Patent Office program for UK
applicants;
- New Zealand, (Section
25(5) of the New Zealand Patent Act); must first file the
application in New Zealand and wait 6 weeks, or obtain a foreign
filing license before a foreign filing;
- Peoples
Republic of China, (Article
20 of the Chinese Patent Law, Article 398 of the Chinese Criminal
Law, and Rule 8 of the implementing
regulations);
- Canada, applicable to Canadian Government employees only);
and,
- South Korea if the invention is defense related: the South
Korea Patent Office has a process to respond to inquiries about
whether or not an invention is defense related. (Article 41 of the
Korean Patent Act, Act No. 950).
Currently, there does not appear to be any foreign filing license
requirement in
- Mexico;
- Japan; See a special U.S. Patent Office program for Japanese
applicants;
- Taiwan;
- Indonesia; and,
- Australia.
As a practical matter, it is also prudent to check on the requirements
of the country of citizenship of that inventor in addition to the country
of residence, should they be different.
The above list of countries is not authoritative and all non-U.S.
residents should first check with their host country's patent office on
the need for a foreign filing license. An email to the applicable
patent office would be a prudent precaution and establish a written
record.
CIVIL OR CRIMINAL VIOLATION
What If I Do Not Check and File Anyway
in the United States? It depends. There is no problem in the
United States for a resident of a foreign country filing in the United
States. However, the country of residence may impose potential
criminal liabilities or civil penalties.
See List of Countries Above
- UK EXAMPLE. The United Kingdom
has a law (Section 23 of the Patents Act 1977) which provides that no
application for a patent for ANY invention may be made abroad by a
person resident in the United Kingdom, without permission from
the comptroller. A violator is subject to fine and imprisonment
for up to two years!
This UK law applies to residency and not citizenship or
nationality. Requests for permission from the UK
comptroller to make an application abroad should be made even if, for
example, such an application is required by contract with a foreign
firm. Alternatively, one can file a UK application for a patent
for the invention and wait six weeks to see if there are any
directions prohibiting filing outside the UK.
The UK comptroller facilitates requests for written authority to file
outside the UK when a request is made, for example via fax (44-1633)
81 44 44 'For attention in Room G.R70,' and will usually post
any permission on the same day that the request is
received. Even faster service can be obtained by calling the
Security Section at (44-1633) 81 35 58. Of course, regular mail
to Room G.R70, The Patent Office, Cardiff Road, Newport, South Wales,
NP10 8QQ, or by personally visiting that location. So it
should not be a significant setback for a UK resident to have to first
ask for permission.
The UK recently announced an exception to this permission requirement
for PCT filings in the European Patent Office and the International
Bureau when non-military-, non-national security-, or safety-related
inventions are involved. No permission is required in this
specific foreign filing circumstance. Further details, and
possibly more current information, can be obtained from the Patent
Office (United Kingdom): Security Section, Concept House, Cardiff
Road, Newport, South Wales, NP10 8QQ; tel: (44-1633) 81 35 58.
Other countries may have civil penalties, or no penalties at all.
FOREIGN FILING FOR A RESIDENT OF THE UNITED
STATES
U.S. Residents.
U.S. residents must obtain a foreign filing license before filing a patent
application in any foreign country. See 35
U.S.C. 184. This can be done by filing a petition or by filing a
patent application.
Civil Violation. When a national security
invention is not involved, the United States is a bit easier on innocent
offenders. The law applies criminal penalties only when there is a
willful violation in the failure of a resident to obtain a foreign filing
license. Criminal penalties involve a fine of not more than $10,000
and imprisonment for not more than two years.
When Is This Most Likely To Happen For a U.S. Resident?
A foreign filing license issue sometimes arises when a U.S. resident wants
to file a patent application in the United States for an invention made in
the United States, but for which the inventor first filed for a patent in
a foreign country, without first having obtained foreign filing license
from the U.S. Patent Office. This can sometimes also arise in the
case of a PCT application filed through the International Bureau or in a
foreign receiving office. In either case, no such United States
patent may issue and any that does is invalid. However, the law
permits a retroactive license to be obtained to prevent the invalidation
when the failure to obtain a foreign filing license was an innocent error,
the inventor did not act to deceive the patent office and the invention
did not involve national security.
CORRECTIVE ACTION
How Do I Fix It? When the violation is innocent
and it does not involve sensitive national security data, it is sometimes
possible to secure a retroactive license from the foreign inventor's
country of residence. The best approach is to check the requirements
in advance to avoid a violation in the first place.
MULTINATIONAL CORPORATIONS
Complications When More Than One Inventor? Large multinational corporations sometimes
face a situation where inventors are resident in two or more countries,
where the invention is made in more than one country, and the patent
filing occurs in the one of their countries. For example, the UK law
mentioned above specifically applies to an invention made when one of the
inventors is a UK resident. In this situation, a violation of the
law could be difficult to overcome and the problem should be approached in
consultation with the patent offices of the states involved.
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