Foreign filing licenses – surprisingly sneaky and easy to overlook, but can come with significant consequences if you do. Many countries, including the US, 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. In this month’s episode, we're bringing you along for a tale of international mystery and intrigue and into the clandestine world of foreign filing licenses. Ty Davis, Patent Strategy Associate at Aurora, along with our all star patent panel, discusses: ⦿ The three main categories of filing license requirements ⦿ Strategies for data collection and how to navigate potential conflicts ⦿ And some example walkthroughs of international filing conflicts and their resolutions Ty is joined by our always exceptional group of IP experts, including: ⦿ Ashley Sloat, President and Director of Patent Strategy at Aurora ⦿ Kristen Hansen, Patent Strategist at Aurora ⦿ David Jackrel, President of Jackrel Consulting https://www.aurorapatents.com/patently-strategic-podcast.html

1. Patently Strategic
Musings
Ty F. Davis | November 29, 2022
This presentation is for information purposes only and does not constitute legal advice.

2. Foreign Filing - Overview
•Foreign Filing Licenses
•Types of Countries
•Strategy
•Potential Conflicts
•Examples
•Takeaways

3. Foreign Filing License
Why we care:
§ Some countries have foreign filing license requirements before patent
applications can be made in other countries
§ As stated by WIPO: “In most cases, you are considered to have
permission to file with another [patent office] if either you have filed an
application for the same invention at the relevant national [patent
office] a certain amount of time previously (which varies from [patent
office] to [patent office]) and have not received a security notice stating
that you should not file elsewhere, or if you have explicitly requested
and been granted permission.”

4. Three Types of Countries
• 1st: Countries without Foreign Filing License requirements
• Notably: Japan, Hong Kong, Mexico, South Africa, Switzerland, Thailand
• 2nd: Countries with Foreign Filing License requirements based on
inventor/applicant Citizenship, Residency, or place of Business
• Notably: Belgium, India, Israel, Italy, United Kingdom
• 3rd: Countries with Foreign Filing License requirements based on location of
inventive activity
• Notably: China, Germany, Russia, Spain, United States
(Note: Two Subcategories- 2nd and 3rd types plus the added limitation of the
invention pertaining to national security, state secrets, and/or military
applications)

5. Practitioner Strategy
• WHO?
• WHERE?
• WHAT?

6. Who?
Identify:
• Inventor(s) citizenship/residence
• Location of Business if the Business entity is the applicant

7. Where?
Identify:
Where the inventive activity occurred?
Note: Portions could be in different locations. Increase teleconferences have
added recent complexity.

8. What?
Identify what has been invented:
• Is it a military application?
• Relate to a national security?
• A state secret?

9. Potential Conflicts
• Two or more inventors/applicants having different citizenship/residence with
countries from the 2nd category
• Two or more inventors performing inventive activity in two or more
countries from the 3rd category
• Inventor(s) with citizenship/residence in a country from the 2nd category but
conceiving the invention or inventive portions within a country from the 3rd
category

10. Example Conflicts and Resolutions
First Example.
• A US company has an in-person workshop at their US based headquarters.
As part, two company employees attend. Employee A is a Chinese resident
working for a Chinese branch of the company. Employee B works for 5
months of the year in the US and returns to his family in India for 7 months
of the year. During the workshop, the two employees invent a manufacturing
process that greatly increases the efficiency of the company’s
manufacturing.

11. First Example Resolutions
• Chinese FFL Jurisdiction: No
• US FFL Jurisdiction: Yes, inventive activity in the US
• Indian FFL Jurisdiction: Yes, Employee B is a tax resident of India

12. First Example Resolutions-Continued
• First option: File requisite documents with IPO wait for permission (typically
within 3 weeks), then file at USPTO
• Second option: File requisite documents with USPTO wait for permission
(typically within 3 days from receipt of expedited petition), then file at IPO

13. Example Conflict and Resolution
First Example.
• An Israeli inventor and a Canadian inventor, working in the private sector,
invent a new mousetrap. The two inventors were working together via
teleconference when they conceived of the invention.

14. Second Example Resolutions
• FFL requirements: None
• Canadian inventor is not a government employee and not subject to
Canadian FFL requirement
• Invention is not related to weaponry or ammunition, or subject which is
otherwise of military value. Thus, not subject to Israeli FFL requirements.

15. Key Takeaways as a Practitioner
• Who? Where? What?
• If two or more countries are involved in the FFL process, work from stricter
to more lenient
• Best to always refer to an associate from each subject country

16. Key Takeaways as a Business
• Consider R and D based in foreign countries
• Consider added time to timelines
• For example, if an FFL is needed in India before filing in the US, add up to three weeks
to US filing date