Describes some issues with foreign filing of patent applications

1. 1
Foreign Filing License for Cross-Border Inventions:
Merely a Formality or Mission Impossible?
Dennis J. Duncan¥
Supporting internationally dispersed research and development (R & D) efforts in Asia, Europe
and North America presents a difficult challenge for corporate patent departments. That is,
managing cross-border IP activities that involve teams of inventors (each residing or holding
citizenship in different countries yet collaborating on the same project) can present traps for the
unwary. With respect to the first filing of a patent application covering the results of such
collaborative cross-border R & D, in-house counsel and their retained counsel (“cross-border
applicant(s)”) need to evaluate various characteristics of the cross-border inventors. In
particular, cross-border applicants need to be aware of the citizenship of each inventor in a cross-
border collaborative scenario, the residency of each inventor in the team, the location of each R
& D facility, the principle place of their business and perhaps the location of the conception and
reduction to practice of the invention. Such characteristics and their legal definitions (each
uniquely defined by each jurisdiction) must be carefully scrutinized prior to selecting the
location for the first-filed patent application. In particular, cross-border applications must seek
out local counsel in foreign jurisdiction to clarify local statues, rules and policies promulgated to
prevent the publication or dissemination of subject matter in a patent application filing which
might jeopardize national security or commercial interests. Chief among the issues to consider is
whether the above mentioned cross-border inventor characteristics require compliance with
multiple foreign filing license requirements. Applicants also must consider whether the
characteristics of the cross-border inventors require that the patent application be filed first in
one jurisdiction and then after a specific period of time, filed in one or more other jurisdictions.
These tasks are not mere formalities, rather, they require careful planning and consideration and
must be taken to avoid loss of patent rights and possible civil and criminal penalties. As
Lawyers familiar with the process know, this can sometimes feel like an impossible mission.
¥
Dennis J. Duncan is a Senior Patent Counsel at Dolby Laboratories where he manages a global patent portfolio.
The views expressed herein are his own and not necessarily those of Dolby Laboratories. Moreover, the opinions
expressed herein are not to be considered legal advice. Anyone considering filing a patent application should
retain competent counsel in the relevant jurisdictions to avoid loss of patent rights and to avoid possible civil and
criminal penalties.

2. 2
Overview of Cross-Border Foreign Filing Restrictions
The World Intellectual Property Organization (WIPO) maintains a list of currently known Paris
Cooperation Treaty (PCT) Contracting States1
that have promulgated patent application filing
restrictions for reasons of national security.2
However, WIPO’s list does easily provide more
specific granular information readily useful to cross-border applicants. That is, WIPO’s list does
not easily identify which jurisdictions do not require obtaining foreign filing licenses (FFLs),
which jurisdictions limit FFLs to national security and military concerns, jurisdictions that
specifically require FFLs or identify those jurisdictions which require cross-border applicants to
first file domestically. Table 1, below is an attempt to consolidate information3
for a readily
reference look-up table for cross-border applicants.
Table 1: Cross-Border Foreign Filing Restrictions
Jurisdictions Not
Requiring FFLs
Restrictions
limited to National
Security and
Military
Applications
Jurisdictions
Requiring FFLs
Jurisdictions
Requiring Applications First
Filed Domestically
Argentina,
Australia, Austria,
Brazil, Ireland,
Indonesia, Japan,
Belgium, Czech
Republic,
Denmark, Finland,
Germany, Israel,
Canada, China,
France, India, Italy,
Malaysia, Singapore,
Spain and the United
Belarus, Cyprus, Greece,
Hungary, Kazakhstan,
Russia and Vietnam.
1
Armenia, Azerbaijan, Belgium, Bulgaria, China, Cyprus, Denmark, Finland, France, Germany, Greece,
India, Israel, Italy, Luxembourg, Malaysia, Norway, Portugal, Republic of Korea, Russian Federation,
Singapore, Spain, Sweden, Turkey, United Kingdom, United States of America and Vietnam. See
“Inventions Through Global Collaboration: Managing Tensions Among Patent Application Foreign Filing
Restrictions and First Filing Requirements in Different Countries,” AIPLA Mid-Winter Institute, Matthew
Zischka, and Cheryl Ng (February 3, 2011) Appendix A (“Zischka, et al.”).
2
http://www.wipo.int/pct/en/texts/nat_sec.html (Visited November 27, 2016).
3
There appears to be conflicting information Compiled from various sources Karen Canaan, “Patent Application
Foreign Filing Licenses: Export Control for Sensitive Technologies Described in Patent Applications,” Patent
Strategy & Management, ALM Law Journal Newsletters, Vol. 9, No. 3 (August 2008), Table 2, (“Canaan”), Matthew
Zischka, and Cheryl Ng, “Inventions Through Global Collaboration: Managing Tensions Among Patent Application
Foreign Filing Restrictions and First Filing Requirements in Different Countries,” AIPLA Mid-Winter Institute
(February 3, 2011) Appendix A (“Zischka, et al.”), http://patentlyo.com/patent/2014/10/considerations-
international-inventions.html (Visited November 23, 2016) and http://www.wipo.int/pct/en/texts/nat_sec.html
(Visited November 27, 2016). It should be noted that applicants should confirm with local counsel in each
jurisdiction the specific requirements of each jurisdiction affecting the cross-border applicant.

3. 3
Liechtenstein,
Mexico, Monaco,
Philippines, Poland,
Portugal, South
Africa, Sri Lanka,
and Switzerland
Taiwan, Thailand
and Venezuela
Korea,
Luxembourg, the
Netherlands,
Slovak Republic,
Sweden and
United Kingdom
States.
In some jurisdictions a foreign filing license is required4
, while other jurisdictions do not require
a foreign filing license and instead mandate that the patent application be first filed
domestically.5
Other countries limit their foreign filing laws to only national security and
military applications.6
For example, Canada only requires a license for inventions by
government employees acting within the scope of their duties and employment.7
France, on the
other hand, has explicit filing provisions that require a license for natural or legal persons having
their residence or principle place of business in France.8
However, the required license may be
bypassed by filing the application in the European Patent Office if the National Institute of
Industrial Property (French Patent Office) is designated as the receiving office.9
In Cyprus, a
first filed application must be domestic if the inventors are nationals (or, in some cases,
permanent residents). Some jurisdictions, such as Bulgaria,10
Italy11
, India12
Russia,13
and
4
Canada, China, France, India, Italy, Malaysia, Singapore, Spain and the United States.
5
Belarus, Cyprus, Greece, Hungary, Kazakhstan, Russia and Vietnam.
6
Belgium, Czech Republic, Denmark, Finland, Germany, Israel, Korea, Luxembourg, the Netherlands, Slovak
Republic, Sweden and United Kingdom.
7
See Canadian Patent Act, s. 20 et seq.
8
French Intellectual Property Code Art. L. 614-18 (Act No. 2006-236 of 1 March 2006).
9
French Intellectual Property Code Art. L. 614-2 (Act No. 2006-236 of 1 March 2006).
10
Art. 45a (1)(2), Bulgarian Patent Law (applies to citizens with permanent address in the Republic of Bulgaria or
legal persons with a principle place of business in the Republic of Bulgaria).
11
Industrial Property Code (Legislative Decree No. 30 of February 10, 2005, Article 198(1)) (Applies to inventors
residing in Italy and cannot be authorized until 90 days after the first filing in Italy).

4. 4
Spain,14
have onerous foreign filing license statutes and regulations which delay the quick and
efficient issuance of cause such foreign patent filing licenses.15
Still other jurisdictions, such as
Singapore and Malaysia, may appear to have somewhat onerous foreign filing licenses statutes
and regulations, but they do not typically cause significant delays due to their expedited
authorization procedures.16
The United States Patent and Trademark Office (“USPTO”) and the State Intellectual Property
Office of the People’s Republic of China (“SIPO”) have significant foreign patent application
filing restrictions and are discussed in more detail below.
USPTO’s Office of Licensing and Review
In the United States, all provisional, utility, design and PCT applications17
are screened to
determine if the disclosure is “detrimental to the national security”18
upon receipt19
by the
12
Indian Patents Act, Section 39 (Must obtain permit and pay fee for license or file in India and wait at least 6
weeks).
13
Article 35, Russian Patent Law (Applies to inventions developed in Russia and gives automatic authorization after
3 months from the filing date.
14
Section 119, 122 Spanish Patent Act (Applies to all patent applications made in Spain and inventions by residents
of Spain are presumed to be made in Spain. Authorization is automatically given after 2 months of filing the patent
application with the Spanish Patent and Trademark Office (SPTO) with the possibility of a one month extension at
the discretion of the SPTO. An expedited license is possible to the Ministry of National Defense but likely not
practical given the time restrains).
15
http://patentlyo.com/patent/2014/10/considerations-international-inventions.html (Visited November 23,
2016).
16
Section 34 Singapore Patent Act and Section 23A of Malaysian Patents Act.
17
Foreign language applications are screened, where possible according to the USPTO. See December 4, 2007
presentation before AIPLA’S Biotechnology/Chemical/Pharmaceutical Customer Partnership, Director Don Hajec,
Director (TC 3600) and Supervisory Patent Examiner Michael Carone (3641) indicated that the screening is also
based upon information provided by the Department of Energy, Homeland Security and Department of Justice.
http://www.aipla.org/committees/committee_pages/Biotechnology/usptobcp/BCP%20Meeting%20Materials/BCP
%20Site/120407/DHajec_ISP.ppt (Visited November 26, 2016) (Slide Deck Entitled “Invention Secrecy
Program”)(“Hajec, et al.”).
18
Hornback v. United States, 36 Fed. Cl. 552, 554, 40 U.S.P.Q.2d 1694 (1996) (interpreting the required screening
under 35 U.S.C. § 181 to be limited to reviewing, by an “appropriate authority” whether the disclosure would be
determine to the United States and not to determine whether the government has any interest in the invention).

5. 5
USPTO’s Office of Licensing and Review20
in consultation with mysterious guidelines provide
by various defense agencies.21
The Office of Licensing and Review is located within
Technology Center 3600 together with Workgroup SPEs 3640 & 3660, utilizing administrative
staff from the Office of Initial Patent Examination (OIPE). 22
The OIPE personnel perform
automated word searches for any terms which might implicate a national security interest. Then
a second level review is conducted by trained examiners having security clearances.23
A third
level review, which is a final decision made by defense agencies,24
may result in the issuance of
a Secrecy Order which is characterized as “an administrative tool for preventing the publication
of a patent application”25
that presents a security risk.
Three types of Secrecy Orders can issue: (1) a Secrecy Order and Permit for Foreign Filing in
Certain Countries, (2) a Secrecy Order and Permit for Disclosing Classified Information, and (3)
19
The U.S. Patent & Trademark Office, Manual of Patent Examination also requires that all examiners alert the
Office of Licensing and Review of any obviously sensitive subject matter that comes to their attention whether by
original disclosure or subsequently introduced amendments. See. U.S. Patent & Trademark Office, Manual of
Patent Examining Procedure § 115 (9Th ed. 2015, rev. July 2015).
20
U.S. Patent & Trademark Office, Manual of Patent Examining Procedure § 115 (9Th
ed. 2015, rev. July 2015).
21
The USPTO’s current screening procedure is unclear with respect to what information it utilizes in making such a
determination. That is, prior to August 2001, the USPTO based its determination upon information provided by
the Armed Services Patent Advisory Board (ASPAB), the Department of Defense and National Aeronautics and
Space Administration, provided by the Department of Energy, Homeland Security and Department of Justice as
well as Defense Threat Security Administration (Army, Airforce, Navy and National Security Administration). See.
“Foreign Filing Licensing and Patent Application Publication: A Risk to National Security? Submitted anonymously
by the Manufacturing Policy Project in response to a Request for Comments on the Feasibility of Placing
Economically Significant Patents under Secrecy Order and the Need to Review Criteria Used in Determining Secrecy
Orders Related to National Security, 77 Fed. Reg. 23662, April 20, 2012 (“Manufacturing Policy Project”).
22
Hajec, et al.
http://www.aipla.org/committees/committee_pages/Biotechnology/usptobcp/BCP%20Meeting%20Materials/BCP
%20Site/120407/DHajec_ISP.ppt (Visited November 26, 2016) (Slide Deck Entitled “Invention Secrecy Program”).
23
“Foreign Filing Licensing and Patent Application Publication: A Risk to National Security? Submitted
anonymously.
24
The 3rd
level review results in the issuance of a Secret Order as a result of the defense agencies finding that the
application has security concerns.
25
Hajec, et al.

6. 6
a Secrecy Order.26
The first type of Secrecy Order “permits the widest utilization of the
technical data in the patent application while still controlling any publication or disclosure that
would result in an unlawful exportation.”27
Applications subject to this first type of Secrecy
Order are permitted to be filed in countries28
based upon bi-lateral secrecy agreements. The
second type of Secrecy Order is employed for applications containing technical data that is
properly classified, or classifiable, such that no governmental proprietary interest exists under
security guidelines where the patent owner has a current Department of Defense (DoD)
agreement which results in the classified data being treated like any other classified material.29
The third type of Secrecy Order is employed where no DoD agreement exists and it is used to
prevent disclosure of the subject matter to anyone without the express written consent of the
USPTO.30
Applicants can seek rescission of the Secrecy Order by: contacting the agency sponsoring the
order,31
or by filing a petition for rescission of the Secrecy Order,32
or by filing a petition to
disclose or modify the Secrecy Order33
The applicant also may appeal to the Secretary of
Commerce to have the Secrecy Order lifted or modified.34
26
Donald S. Chisum, Chisum on Patents, looseleaf (Albany, N.Y.: Matthew Bender & Co., Inc., 2016) §1.06[2][a],
U.S. Patent & Trademark Office, Manual of Patent Examining Procedure § 120 (9Th
ed. 2015, rev. July 2015)
27
Manufacturing Policy Project at 6.
28
Australia, Belgium, Canada, Denmark, France, Germany, Greece, Italy, Japan, Luxembourg,
the Netherlands, Norway, Portugal, Spain, Sweden, Turkey, and the United Kingdom. Applicants cannot file
applications subject to such an Order directly in the European Patent Office since no reciprocal security agreement
is in place currently.
29
Chisum §1.06[2][a].
30
Chisum §1.06[2][a].
31
Sabing H. Lee, “Protecting the Private Inventor under the Peacetime Provisions of the Invention Secrecy Act,”
(1997) 12:2 Berkeley Tech. L. J. 345. 366 (“Lee”).
32
37 C.F.R § 5.4.
33
37 C.F.R § 5.5.
34
35 U.S.C. §181.

7. 7
Patent applications subject to a Secrecy Order are still examined, but are not published, granted
or otherwise disclosed.35
Applicants can, if the application is allowed and used by the
government, apply for compensation to the agency sponsoring the order, or bring suit in the
United States Court of Federal Claims36
to obtain compensation. The compensation sought is
not limited to an eminent domain theory.37
The penalty for unauthorized disclosure of patent
subject matter that is subject to a secrecy order is abandonment of the invention,38
as well as a
possible fine not more than $10,000 or imprisoned for not more than two years (or both) if the
disclosure is shown to be willful.39
Foreign Filing Licenses in the United States
Prior to filing an application in a foreign county, an applicant must wait six months for the
above-referenced screening to occur.40
A foreign filing license also must be obtained, which is
indicated in a subsequently issued filing receipt.41
An applicant may petition the USPTO for a
foreign filing license without filing a corresponding patent application if the petition is
“accompanied by a legible copy of the material upon which a license is desired.”42
Moreover, an
expedited request may be made pursuant to MPEP §140(I) which may be processed in as little as
three days.43
Should the applicant erroneously file or cause or authorize the filing in any foreign
country, they may petition for a retroactive foreign filing license by way of a verified statement
35
Chisum §1.06[2][a].
36
35 US.C. §183.
37
Constant v. United States (Constant I), 617 F.2d 239, 242, discussed in Lee, supra.
38
35 US.C. § 182.
39
35 U.S.C. § 186.
40
35 U.S.C. § 184.
41
37 C.F.R. § 5.11, U.S. Patent & Trademark Office, Manual of Patent Examining Procedure § 140 (9Th
ed. 2015,
rev. July 2015).
42
37 C.F.R. § 5.13.
43
Hajec, et al.

8. 8
(e.g., oath or declaration).44
to do so the applicant and any other parties involved having personal
knowledge of the situation are required to indicate in their verified statements the names of the
foreign countries where the application was filed, and the dates of each filing.45
The verified
statements also must: (1) state that the subject matter was not subject to a secrecy order at the
time of the filing abroad, (2) state that the subject matter is not currently under a secrecy order,
(3) much show that the applicant diligently sought a license after disclosure of the proscribed
foreign filing, and (4) provide an explanation as to why the material was erroneously filed abroad
through without first obtaining the required license and paying the required fee.46
Accordingly,
all inventions made in the United States47
require that the applicant obtain a foreign filing license
prior to filing a patent application in a foreign jurisdiction unless: (1) the U.S. patent application
was filed less than six months prior to the date on which the foreign patent application is to be
filed, or (2) the patent application filed in the United States is a PCT application filed with the
United States Receiving Office.48
It should be noted that a foreign filing license does not cover
the transmission of technical information to foreign countries for preparation of an application.49
44
37 C.F.R. § 5.25.
45
Id.
46
Id.
47
See. Sealectro Corp v. L.V.C. Indus, Inc., 271 F. Supp. 835 (E.D.N.Y. 1967) (location of where the invention was
reduced to practice not place of conception determined where the invention was made under 35 U.S.C. § 184).
48
37 C.F.R. § 5.11, U.S. Patent & Trademark Office, Manual of Patent Examining Procedure § 140 (9Th
ed. 2015, rev.
July 2015).
49
U.S. Reg. July 23, 2008 (warning to patent applicants and patent agents/attorneys that they cannot
rely on a foreign filing license in order to send information overseas for purposes of having A non-U.S.
attorney prepare a draft patent application overseas which is then returned to the U.S. attorney or
agent for filing in the USPTO. This clarifies that the USPTO has been delegated authority under the
Export Administration Regulation (EAR) to grant foreign filing licenses for the limited purpose of filing
foreign patent applications. The USPTO has no authority to grant a license for the export of technical
data for the purpose of having a patent application prepared overseas for later filing in the USPTO. See
Scope of Foreign Filing Licenses 73 Fed. Reg. 42781 (July 23, 2008).

9. 9
Obtaining foreign filing licenses from SIPO
Similar to 37 C.F.R. § 5.11, discussed above, Article 20 of China’s Patent Act50
requires an
applicant to get a foreign filing license (“FFL”) if he or she would like to file a patent application
abroad to protect an invention made in China.51
There are several ways to get an FFL from
China’s SIPO under Article 8 of Rules for the implementation of China’s Patent Law. 52
The
applicant can do one of the following: (1) The applicant can file a request for the FFL with a
description of the invention made in China if the applicant would like to file an application for
patent directly in a foreign country or file an international patent application directly with a
relevant foreign organization, (2) or he or she can file a request for the FFL with or after filing a
patent application with SIPO, (3) or he or she can file a PCT application with SIPO and that is
deemed to constitute the simultaneous filing of an FFL.
Article 20 applies to any entity or individual who files a patent application abroad based on an
invention or utility model “completed” in China.53
As mentioned above, for a first-filed
application outside of China, the cross-border applicant may be required to first seek approval
from SIPO through a “secrecy examination” procedure.54
Rule 8 defines an invention or utility
model “completed” in China as one for which the substantive or material portion has been
completed in China.55
China, like the United States, has not yet made a clear pronunciation of
what the term “completed” actually means. As such, China’s “Completed” is just as vague as the
50
The foreign filing requirements came into effect on October 1, 2009 as part of the Third Revision to the Chinese
Patent Laws.
51
The regions of Hong Kong and Mocao are excluded whereas the law clarified that such a requirement is limited
to technical solutions made within the territory of China.
http://www.managingip.com/Article/3322856/Implications-of-country-of-completion-in-Chinese-filing.html
(visited November 12, 2016) (“Lin et al”)
52
Wu, Xuqiong, “Impact of Recent Chinese Patent Law Amendments,” Law360, January 27, 2010 (“Wu”)
53
Id. Wu
54
Id. Lin et al
55
Id. Wu

10. 10
United States’ “all inventions made”56
statutory language which provides little guidance for
cross-border applications. In other words, it would be unwise to justify not complying China or
the United States FFL requirement based upon either jurisdiction’s vaguely defined terms
“reduction to practice” or “conception” of an invention.
Conclusion
A review of the various online and printed known legal resources is not enough to insure against
the loss of patent rights and possible civil and/or criminal penalties that can be imposed by
failing to comply with one or more jurisdictions’ foreign filing restrictions. Corporate legal
departments supporting internationally dispersed research R & D efforts in Asia, Europe and
North America must formulate strategies to avoid such consequences. Cross-border applicants’
foreign filing procedures should include, at a minimum, tracking the citizenship and residency of
each inventor by, for example, including this information in a frequently updated document
management system. Also, local counsel should be retained in any relevant foreign jurisdictions
to clarify local statues, rules and policies promulgated to prevent the publication or dissemination
of subject matter in a patent application which might jeopardize national security or commercial
interests. Chief among the inquiries to be made is a determination regarding whether the above-
referenced cross-border inventor characteristics requires compliance with multiple foreign filing
license requirements. Also important is determining whether the cross-border inventor
characteristics require that the patent application be initially filed in one jurisdiction then later
filed in one or more foreign jurisdictions. Professional Associations, such as the AIPLA,
together with international associations, such as the WIPO, could form working groups to
publish and constantly update easy-to-understand informational guidelines to help applicants
avoid the above-referenced foreign filing problems. Such efforts would mitigate the harm done
by the significant amount of unreliable foreign filing information available on unofficial web
sites occasioned primarily by the rapidly changing provisions of the various jurisdictions’ patent
laws.
56
See Footnote 47, supra