[Patentpractice] Foreign Filing License Incongruity Question

[Richard Straussman]

Carl,

     THANK YOU for pointing out that link!  I am glad to see that I am 
not hallucinating the potential issue.

*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
*



On 8/13/2024 10:05 AM, Carl Oppedahl wrote:
>
> 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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