[Patentpractice] Foreign Filing License Incongruity Question

Tue Aug 13 15:33:40 UTC 2024

Richard/Carl:

One option I have tried in the Pharma space is to provide a generic summary of the invention to the two countries in question with sufficient details for the two countries to be able to give their blessing without disclosing the details of the invention.  For example “ the invention relates to a pharmaceutical composition of the know drug X” or “the invention is to an analog of drug Y, both drug Y and the analog being useful for the treatment of condition Z, with the analog having superior efficacy/formulation properties/fewer side effects etc.”  I haven’t had to deal with this on the last 6 years or so, but it worked back then.

Years ago, I tried raising the issue at the USPTO and was told (after going through many different offices) that they had no answer and it wasn’t their call.  Basically8, the PTO sent me over to Customs Control, who by the way also had no answer, which is when I tried the above approach and I got the foreign filing license in each country before filing the application in either and then filed a copy of the license along with the filing of the application.  Of course, there is some risk that you oversimplified the summary but this would minimize that risk.  At least it has worked in the few instances I have had the problem and might not work at all if the invention is truly one in which a secrecy order would clearly  be applicable unless very detailed disclosure were provided in the first instance (especially in defense industries).

Hope this helps.

Irving M. Fishman
Registered US Patent Attorney
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From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> On Behalf Of Richard Straussman via Patentpractice
Sent: Tuesday, August 13, 2024 10:48 AM
To: Carl Oppedahl <carl at oppedahl.com>; For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com>
Cc: Richard Straussman <rstraussman at weitzmanip.com>
Subject: Re: [Patentpractice] Foreign Filing License Incongruity Question

LOL - I would sooner take legal advice from the PTO (less lethal the cyanide, but potentially just as dangerous).
Richard Straussman
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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<mailto:rstraussman at weitzmanip.com>

http://www.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<mailto:rstraussman at weitzmanip.com>

http://www.weitzmanip.com<http://www.weitzmanip.com/>

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