[Patentpractice] Foreign Filing License Incongruity Question

[Carl Oppedahl]

Speaking of hallucinating ... I assume that one option is to ask ChatGPT 
how to solve your fact pattern.

On 8/13/2024 8:11 AM, Richard Straussman via Patentpractice wrote:
> 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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