Competition is global, but patents are national. From a U.S. perspective, how to select country of first patent filing. Foreign filing license and how to get one. U.S. and international patent laws and treaties, Paris Convention, Patent Cooperation Treaty or PCT. Export control laws. Conflicts of laws. Disclaimer: Not legal advice.

1. How to Select Country of First
Patent Filing, Get Foreign
Filing License & Comply with
Export Controls
Richard P. Beem
BEEM PATENT LAW FIRM
Web: www.BeemLaw.com
Blog: www.BeemOnPatents.com
Chicago, IL USA
Illinois Paralegal Association
Spring Education Conference
May 5, 2016 (revised May 6th)
*Focus of this presentation is on non-provisional U.S. utility patent applications from U.S. perspective unless otherwise stated.
**This presentation does not constitute legal advice and does not form an attorney-client relationship. Consider engaging counsel for legal advice and/or
representation, e.g., regarding patents and foreign filing.

2. Introduction
• Business is often international
• Patents are primarily national (though treaties and
harmonization may apply)
• No such thing as worldwide patent
• A U.S. patent application may lead to issuance of a U.S. patent
• A U.S. patent application also may provide basis for claim of
priority when filing timely foreign or PCT applications
• To obtain foreign patents, one ultimately must file separately
and timely in each foreign country (or region such as EPO)
• Export control laws and foreign filing licenses may apply
• Conflicts between national laws may occur
2

3. Who should file for patent?
(U.S., international/PCT, foreign)
• For Americans, a U.S. patent provides the biggest “bang for the buck”
• Independent inventors: It takes more than an “idea” to get a patent—it takes an
invention and money—and it takes a business plan to make money
• Companies that do business internationally may benefit from U.S., international
(PCT) and foreign patent applications
• Not every company should file foreign—and even then, not on every invention
• Look at business case before filing U.S., international, foreign patents
• Re-evaluate six months after U.S. filing, before PCT or foreign apps: Is the product making
money? (justify further investment)
• If PCT 30 months date is approaching, re-evaluate before entering national phase. Making
money?
• For more on patent strategy, see R. Beem, 4 W’s of Patent: Who, What, Why,
When? at www.BeemOnPatents.com (Jan. 2016)
3

4. Simplest case
• U.S. company
• All U.S. inventors
• Invention made in U.S.
• File timely utility (non-provisional) patent application in USPTO
• Before any public disclosure or commercialization that would violate grace period or
absolute novelty
• Await foreign filing license from USPTO
• File timely foreign or international (PCT) patent application(s) if desired under Paris
Convention (within 12* months after first regular U.S. filing)
• Note: Foreign filing license is only a license to file in foreign patent office—it is not
a license to “export” the technology (or to disclose it to foreigners)
__________
*6 months for designs
4

5. Intellectual Property Treaties
• Paris Convention
Paris Convention allows claim of priority in foreign or PCT filing within 12* months after first regular filing of
a utility patent application. 176 contracting states (countries).
• Patent Cooperation Treaty (PCT)
PCT is international treaty with 148 contracting states (countries)
• PCT makes possible to seek patent protection in many countries by filing single “international” (PCT)
patent application instead of filing several separate national or regional patent applications
• Buys time: 30 months from first regular filing date
• Granting of patents remains under control of national or regional patent offices in “national phase”
• Notably not in PCT: Argentina, Taiwan
• Note: There are 196 countries in the world (195 if you omit Taiwan): Not all countries are parties to Paris
Convention or PCT
*6 months for designs
5

6. In which country to file first?
• Most U.S. companies will file first in the U.S.
• Global company with R&D or design centers in multiple
countries: Ask counsel where to file first
• International development teams working on products—
inventors from or in multiple countries—ask counsel where
to file first
• Country laws, costs, and priorities impact decision
regarding where to file patent application first
6

7. Typical U.S. Scenario
• U.S. patent application filing
• U.S. applicant
• U.S. inventor
• USPTO grants foreign filing license
• PCT application filing within 12
months (for utility)
• National application (or national
phase) filings
• PCT can “buy time” up to 30 months
from 1st filing date
7

8. Grace or no? / foreign filing license
• Limited grace period (U.S.) vs. absolute novelty (most
countries) required as of first filing date
• USPTO foreign filing license
• Granted, with the date the license begins
• Even if not explicitly granted, if no security order not to
foreign file in 6 months, then consider it granted
8

9. U.S. Patent and Trademark Office
Filing Receipt
Receipt is acknowledged…lorem ipsum dolor sit amet, consectetur adipiscing elit. Suspendisse convallis
massa at lectus pharetra laoreet. Pellentesque facilisis tellus nisi, eget condimentum elit dictum eu. Proin
semper malesuada iaculis. Nulla hendrerit nibh odio. In at elit at enim molestie vehicula sit amet a quam. Ut
quis convallis elit. Phasellus eu auctor arcu, et dapibus urna. Aliquam urna mi, auctor eu aliquam vitae,
venenatis sit amet purus. Nullam lacinia risus sapien, sed lacinia augue interdum in. Fusce rutrum lorem eu
vulputate sagittis.
Nam id dignissim magna. Duis a metus tincidunt, eleifend felis eu, sollicitudin nunc. Cras auctor iaculis elit,
scelerisque pretium dui. Phasellus in volutpat risus, et aliquet orci. Lorem ipsum dolor sit amet, consectetur
adipiscing elit. Nunc dictum nibh tortor, ac gravida magna tempor ut. Donec lorem elit, tristique nec nulla id,
fringilla iaculis libero. Suspendisse hendrerit velit ac sagittis interdum. Mauris id fermentum ipsum.
Vestibulum in risus augue.
In hac habitasse platea dictumst. Sed placerat a erat lobortis malesuada. Praesent sit amet laoreet odio, sed
porta augue. Nunc non lectus a dui molestie egestas. Nunc non pellentesque nisi. Integer luctus nisl in urna
pretium aliquet. Quisque elementum blandit rutrum.
Mauris a pellentesque dolor. Aenean sit amet magna ac leo interdum mollis non nec tortor. Vivamus
commodo ex id justo vulputate tristique lobortis nec est. Donec faucibus, lacus eget pulvinar dapibus, eros
eros fringilla erat, eget pellentesque metus diam id magna. Cras sagittis pulvinar est eget tempor. Nam
scelerisque tellus sit amet fermentum blandit. Nulla facilisi.
Sed ornare at justo non tristique. Etiam nec porttitor nibh, nec euismod metus. In leo est, faucibus id
porttitor vel, varius sollicitudin nisl. Pellentesque mollis congue lectus ac porttitor. Quisque vel libero et odio
eleifend eleifend at eu felis. Fusce quis sapien turpis. Morbi fermentum nunc in aliquet malesuada. Integer
elementum ex ultrices felis maximus vestibulum. Sed ultricies ullamcorper velit vitae viverra. Nulla quis
mauris posuere, tristique lorem mollis, ornare elit. Vivamus orci lorem, molestie vel suscipit eu, ultricies ac
ex. Suspendisse quis ultricies est. Aliquam erat volutpat. In ut orci eget dolor dignissim facilisis. Maecenas
aliquet risus eget venenatis commodo.
9
If Required: Foreign Filing License Granted: 05/05/2016

10. 10

11. Factors to consider in subsequent patent
filings (assume 1st filing in U.S.)
• Where and when to file foreign or international (PCT) patent
applications
• For each country or region, consider manufacturing, sales,
competition, and cost/benefit
• IP5—US, EPO, China, Japan, Korea—account for 90% of world
patent filings. In addition, Canada is a major trade partner of U.S.
• European Union (EU) (28 countries) is moving to unitary patent
• European Patent Office (EPO) (38 countries) (EU plus Turkey,
Switzerland, Norway, etc.)
• Consider G-20 countries (19 major economies plus EU)
• Patent/legal factors to consider include:
• Will the invention be considered “novel” in the countries where you want to file?
• Timing under Paris Convention and PCT
• Do the countries permit patenting the type of technology?
• Will you be able to enforce your patent once you receive it?
11

12. May a U.S. inventor/applicant file in
a foreign country first?
If a U.S. inventor or applicant wants to file the application
in a foreign country first:
• Was it invented in the U.S.? If yes, then
• Request foreign filing license from the USPTO - MPEP
§1832
This also applies to filing a PCT application other than in
the USPTO as receiving office
12

13. What do you do if application was filed
in a foreign country without a foreign
filing license from USPTO?
• To rectify the violation, the company must petition the USPTO for
a retroactive foreign filing license.
Petition for Retroactive Foreign Filing License in
37 CFR 5.25, MPEP § 140
• The USPTO will grant the foreign filing license provided that the
failure to procure the license was through error, without
deceptive intent, and the patent application does not disclose
prohibited subject matter.
• If the patent application does disclose prohibited subject matter,
then the USPTO has the discretion to abandon the patent
application (35 U.S.C. §182)
13

14. Filing a Foreign Application for a
Foreign Company for a U.S. Invention
• Must have a foreign filing license from
USPTO if it was invented in the U.S.
• Consider laws of country of applicant and
country of inventor
14

15. May a foreign entity or foreign
inventor file first in the U.S.?
• Examine national laws that may apply
• Inventor nationality
• Applicant/assignee nationality
• Jurisdiction of the invention (where was it invented?)
• Security provisions and restrictions, secrecy orders of
countries
15

16. Conflicts of National Laws
• If you have inventors or inventions that involve
two or more countries, ask counsel how to
proceed
• It is possible that two countries may both
require that you file in their country first (good
luck to you and counsel in sorting that out)
16

17. Country Security Provisions
Countries generally fall into three categories of security
provisions :
• Countries with no security provisions
• Countries with security provisions which only relate to
defense related technology
• Countries with security provisions which apply irrespective of
invention subject matter
17

18. Known Filing Restrictions
State Restrictions
AM Armenia Inventions made in the country
AZ Azerbaijan Applications containing State secrets
BE Belgium Applications by residents
BG Bulgaria Applications by residents
CN China Inventions made in the country
CY Cyprus Inventions made in the country
DE Germany Applications containing State secrets
DK Denmark Applications by residents
ES Spain Applications by nationals and residents
18
Information from the World Intellectual Property Organization

19. Known Filing Restrictions
State Restrictions
FI Finland Applications by residents
FR France Applications by natural or legal persons having a residence or principal place of business
in France
GB United Kingdom Applications by residents
GR Greece Applications by nationals
IL Israel Applications by nationals and residents
IN India Applications by residents
IT Italy Applications by residents
KR Republic of Korea Applications by residents
LU Luxembourg
19
Information from the World Intellectual Property Organization

20. Known Filing Restrictions
State Restrictions
MY Malaysia Applications by residents
NO Norway Inventions made in the country. Applications by residents. Inventions owned by residents
PT Portugal Applications by residents
RU Russia Inventions made in the country
SE Sweden Inventions made in the country
Applications by residents
Inventions owned by Swedish companies
SG Singapore Applications by residents
TR Turkey Applications by residents
US United States Inventions made in the country
VN Vietnam Applications by residents
20
Information from the World Intellectual Property Organization

21. Summary of National-First Filing
Requirements
None Limited to national Security and
Military Applications
License Required First Filing Must be Domestic
Argentina, Australia, Austria, Brazil, Hong
Kong, Indonesia , Ireland, Japan,
Liechtenstein, Mexico, Monaco, New
Zealand, Philippines, Poland, Portugal,
South Africa, Sri Lanka, Switzerland,
Taiwan, Thailand, Venezuela
Belgium, Czech Republic, Denmark,
Finland, Germany, Israel, Korea,
Luxembourg, Netherlands, Slovak
Republic, Sweden, United Kingdom
Canada1, China, France2, India, Italy,
Malaysia, Singapore, Spain, United States
Belarus, Cyprus3, Greece3, Hungary3,
Kazakhstan, Russia, Vietnam4
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1 Only required for government employees.
2 Only applies where inventors are French nationals or the company’s principle place of business is France (Article L.
614-18, 614-20).
A European patent application can also be filed as the first filing without obtaining a foreign filing license.
3 First filing must be domestic where inventors are nationals (and in some cases permanent residents).
4 Also requires Vietnamese inventors without an obligation to assign to file first in Vietnam.

22. Outsourcing
Q: Does a foreign filing license from the USPTO cover
transmission of technical information to foreign countries
for preparation of an application?
• USPTO published in U.S. Federal Register, July 23, 2008 a notice warning patent applicants and
patent agents/attorneys that they cannot rely on a Foreign Filing License to send information
overseas for the purpose of having a patent application prepared overseas and returned to the
U.S. attorney or agent for filing in the USPTO.
• This clarified that the USPTO has been delegated authority under the Export Administration
Regulations (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 filing in the USPTO.
http://www.uspto.gov/sites/default/files/web/offices/com/sol/notices/73fr42781.pdf
A: No. (see Q above)
22

23. U.S. Export Controls
• Exporters generally must submit a license request with the
appropriate U.S. agency for any item on one of these control lists.
• Sharing export controlled information with a foreign national
inside the U.S. is known as "deemed export." A deemed export
occurs when technology or technical information regulated under
the federal export control regulations is "exported," not by
shipping it overseas but by "transferring" it to a foreign national
in the United States
• Extensive review process, including review by interested U.S.
government agencies, such as the Department of Defense,
Department of Energy, the intelligence community, and NASA, as
well as interested bureaus within the Department of State.
23

24. U.S. Export Review
The U.S. government export reviews may include:
• the eligibility of the applicant
• all parties involved in the transaction
• appropriateness of the quality and quantity of the proposed
export to the end-user and stated end-use
• any legal impediments to the proposed export
• any national security implications presented by the proposed
export
• any foreign policy implications, including but not limited to:
• potential effect on regional stability
• human rights
• ensuring compliance with multilateral control regimes.
24

25. Commerce Control List
Category Description
0 Nuclear & Miscellaneous
1 Materials, Chemicals, Microorganisms and Toxins
2 Materials Processing
3 Electronics
4 Computers
5 Part 1 Telecommunications
5 Part 2 Information Security
6 Sensors and Lasers
7 Navigation and Avionics
8 Marine
9 Aerospace and Propulsion
Product
Groups
Description
A Systems, Equipment and
Components
B Test, Inspection and Production
Equipment
C Material
D Software
E Technology
25
Obtained from U.S. Bureau of Industry and Security,
U.S. Department of Commerce
https://www.bis.doc.gov/index.php/regulations/comm
erce-control-list-ccl

26. Secrecy Of Certain Inventions
United States Code ( USC) Title 35 - Patents
CHAPTER 17 — SECRECY OF CERTAIN INVENTIONS AND
FILING APPLICATIONS IN FOREIGN COUNTRIES
Sections:
• 181 Secrecy of certain inventions and withholding of patent.
• 182 Abandonment of invention for unauthorized disclosure.
• 183 Right to compensation.
• 184 Filing of application in foreign country;
• 185 Patent barred for filing without license.
• 186 Penalty.
• 187 Non-applicability to certain persons.
• 188 Rules and regulations, delegation of power.
26

27. Security Review, Secrecy Orders,
Applications Under Seal
• Office of Initial Patent Examination at the USPTO flags the
application as requiring security review.
• If the U.S. Government does not have a property interest in the
subject matter of the application, it is forwarded to the
appropriate agency, to determine if public disclosure of the
subject matter of the application would be detrimental to
national security.
• If the U.S. government has a property interest in the subject
matter of the application (i.e., the invention is wholly or fully
funded by a governmental agency), is forwarded to Chief Officer
of agencies (i.e. DOE or NASA) to determine if public disclosure
of the application would be detrimental to national security.
27

28. Secrecy Order Review and Rescind
35 U.S.C. §181 specifies that applications are not to be
kept under a Secrecy Order for more than one year
• Each year any patent application under a Secrecy Order is
reviewed by the Chief Officer of the recommending agency for a
determination if the Secrecy Order should be lifted or renewed.
• At any time between review periods, the Commissioner of
Patents may rescind the Secrecy Order upon notification by the
Chief Officer of the recommending agency that the disclosure of
the invention is no longer detrimental to the national security.
28

29. Secrecy Order Appeal
• The owner of a patent application placed under a
Secrecy Order has the right to appeal to the Secretary
of Commerce at any time.
• Once a Secrecy Order has been lifted, the foreign filing
license for the patent application will issue
automatically.
29

30. Ask Counsel Before Filing or
Exporting
• In order to preserve international rights, attorneys and
paralegals should explore inventorship, ownership and
the foreign filing laws of the country of invention early
on in the disclosure and application preparation
process.
• Seek legal counsel in the country of invention and the
country where the application is to be filed.
• A U.S. foreign filing license only gives you the right to
file in another Patent Office – it does not give you the
right to export the technology (or disclose it to
foreigners).
30

31. Recap & More
• We’ve been talking about:
• Choice of country for first filing
• Most U.S. companies file 1st in USPTO
• Foreign filing licenses and export controls
• For more on U.S. and international patents and
strategy, see:
• Beem on Patents blog
• www.BeemOnPatents.com
31

32. Resources
• WIPO
- Annex B of the PCT Applicant’s Guide
• USPTO Foreign Filing Licenses MPEP §140
• 35 U.S.C. 17, Sections 181 - 188
https://www.gpo.gov/fdsys/granule/USCODE-2011-title35/USCODE-2011-
title35-partII-chap17
http://www.uspto.gov/web/offices/pac/mpep/consolidated_laws.pdf
• Export Controls:
http://www.state.gov/strategictrade/overview/
http://www.bis.doc.gov/index.php/exporter-portal/47-about-
bis/newsroom/506-export-basics-publications-2
http://www.bis.doc.gov/index.php/forms-documents/doc_view/142-eccn-
pdf
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33. Questions?
33

34. Thank you!
Richard P. Beem
BEEM PATENT LAW FIRM
Web: www.BeemLaw.com
Blog: www.BeemOnPatents.com
Chicago, IL USA
34
This presentation does not constitute legal advice and does not form an attorney-client relationship.
Consider engaging counsel for legal advice and/or representation, e.g., regarding patents and foreign filing.