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 World International Property Organization (WIPO) has a list of countries with foreign filing license requirements. This is a summary site and should not be relied upon as the last word. I have been advised that the Israel listing is not complete because Israel also requires security related inventions to have a foreign filing license.

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, The UK Patents Act 2004, Section 7 requires first filing in the UK only if the invention related to military technology, or if for any reason publication of the information might be prejudicial to national security or be prejudicial to the safety of the public;
• New Zealand, (Section 25(5) of the New Zealand Patent Act) was repealed on 13-SEP-2014 by section 247(1) of the Patents Act 2013 (2013 No 68). Prior to repeal, this law required applicants to first file the application in New Zealand and wait 6 weeks, or obtain a foreign filing license before a foreign filing. Even though the law was repealed, the Patents Regulations 1954 were not also revoked and so checking with the NZ patent office may be advised.
• 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 (See example below);
• 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).
• Singapore, (Section 3, 12.3.3 of the Singapore commercial laws): “it is an offence for a Singapore resident, without the Registrar�s written consent, to file or cause to be filed a patent application outside Singapore without first filing an application for the same invention in Singapore at least two months before the application outside Singapore is made.”
• PCT Countries: See the aforementioned WIPO site for known filing restrictions relating to Patent Coopoeration Treaty member countries.

Currently, there does not appear to be any foreign filing license requirement in

• Mexico;
• Japan;
• 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.

NOTE:  Of related interest is a special U.S. Patent Office program to give credence to the search work and patentability findings done in Japan, UK, Korea, Canada, Australia, Europe and Denmark.

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.

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.