[Patentpractice] Foreign Filing License Incongruity Question

[Carl Oppedahl]

WIPO has a collection https://www.wipo.int/pct/en/texts/nat_sec.html of 
national security requirements for about 24 countries.  It is a 
straightforward matter to run one's finger down through the list of 24 
requirements, and to work out country-pairs where it is literally 
impossible to figure out how to proceed.  I'd guess you have identified 
one of the "impossible" country-pairs.

You know how there are cruise ships whose entire business model is, the 
ship comes into port, picks up passengers, and then sails some number of 
miles out to sea, past a territorial limit or something.  So that 
everybody can gamble and it does not violate the laws of any country 
because it is in international waters.

The only solution I can see for some of the country pairs is to roll 
back the clock and put your two inventors on such a ship. And time it 
all so that the inventing happens only in international waters.

What you will find, when you run your finger down the list of countries, 
is that the precise trigger (the thing that makes it so that somebody 
goes to prison or whatever) is very different from one country to the 
next.  With some countries, it is "where was the invention made?"  With 
some countries it is "is any inventor a citizen of our country?"  So if 
the country you are worried about triggers on citizenship of inventor, 
it does not help to put the inventors on Carl's cruise ship.

Also look at consequences of failure, per country.  If the only 
consequence of failure is "you lose your patent rights in that country" 
then that might turn out to be a business decision of "who cares?"  If 
on the other hand the consequence is prison time, well, that might be a 
greater concern.



On 8/13/2024 7:38 AM, Richard Straussman via Patentpractice wrote:
> All,
>
> I am wracking my brain over this one and am looking for the collective 
> wisdom of the brilliant members of the ListServ.
>
> Assume that an invention is jointly collaboratively developed and 
> invented by two persons, one located in and a resident of, the U.S., 
> and the other located in and a resident of India.
>
> Both countries require a foreign filing license before the technology 
> can be "exported."  If the U.S. is to be the place of first filing, 
> then one needs to get an Indian FFL before that filing.  However, in 
> order to do so, the Indian Patent Office needs the application to 
> review it.  But sending it to them theoretically violates the need for 
> a U.S. FFL.  Likewise, if India is to be the place of first filing, 
> then you need a U.S. FFL before you can file there, but that would 
> violate the Indian requirement.
>
> Assume that first filing a PCT application is NOT an option 
> (irrespective of whether or not that solves the problem), how have 
> folks in such a situation reconciled the issue?
>
> Thanks in advance!
>
> -- 
> *Richard Straussman**
> * *Senior Counsel*
> * Registered Patent Attorney
> * Member NY, NJ & CT Bars
> *. . . . . . . . . . . . . .*
> *Weitzman Law Offices, LLC*
> *Intellectual Property Law*
> 425 Eagle Rock Avenue, Suite 401 (PLEASE NOTE THE SUITE CHANGE)
> Roseland, NJ 07068
> *direct line* 973.403.9943
> *main* 973.403.9940
> *fax*973.403.9944
> *e-mail*rstraussman at weitzmanip.com
>
> *http://www.weitzmanip.com
> *
>
>
>
>
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