[Patentpractice] Foreign Filing License Incongruity Question

Tue Aug 13 14:48:13 UTC 2024

LOL - I would sooner take legal advice from the PTO (less lethal the 
cyanide, but potentially just as dangerous).

*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 10:45 AM, Carl Oppedahl wrote:
>
> 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
>>>> *
>>>>
>>>>
>>>>
>>>>
>>
>>
-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://oppedahl-lists.com/pipermail/patentpractice_oppedahl-lists.com/attachments/20240813/384f2031/attachment.html>