[Patentpractice] Foreign Filing License Incongruity Question

[Irving Fishman]

In the US, FFL issues come up based on disclosure; who is an inventor depends on what is claimed.

The mess get worse when a foreign national invents something in the US.  If the foreign national's country of citizenship requires first disclosure in that country while the US requires an invention made in the US be first disclosed in the US, there appears to be only the avenue of obtaining a FFL from each of the two countries based on a summary of the invention ttechnology without disclosure of specifics.


Irving M. Fishman
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From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> On Behalf Of Patent Lawyer via Patentpractice
Sent: Tuesday, August 13, 2024 12:24 PM
To: Patentpractice Patentpractice <patentpractice at oppedahl-lists.com>
Cc: Patent Lawyer <patentlawyer995 at gmail.com>
Subject: Re: [Patentpractice] Foreign Filing License Incongruity Question

Do the FFL requirements kick in because of what is disclosed or what is claimed?   (I would guess it is based on disclosure, not claims.  But I have no actual knowledge.)
Are they both really inventors?  Could one of them be left of depending on what is claimed?



From: Patent Lawyer <patentlawyer995 at gmail.com<mailto:patentlawyer995 at gmail.com>>
Date: Tuesday, August 13, 2024 at 9:44 AM
To: Patentpractice Patentpractice <patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>>
Cc: Richard Straussman <rstraussman at weitzmanip.com<mailto:rstraussman at weitzmanip.com>>
Subject: Re: [Patentpractice] Foreign Filing License Incongruity Question

Has the application already been written?
If so, were drafts sent back-and-forth to the inventors?
If so, hasn't one or both of the countries' export laws been violated?

What about the inventors' collaboration before the application was drafted - didn't that involve the inventors sending stuff to each other (from India to the US and vice versa)?




From: Patentpractice <patentpractice-bounces at oppedahl-lists.com<mailto:patentpractice-bounces at oppedahl-lists.com>> on behalf of Patentpractice Patentpractice <patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>>
Reply-To: Patentpractice Patentpractice <patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>>
Date: Tuesday, August 13, 2024 at 9:40 AM
To: Patentpractice Patentpractice <patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>>
Cc: Richard Straussman <rstraussman at weitzmanip.com<mailto:rstraussman at weitzmanip.com>>
Subject: [Patentpractice] Foreign Filing License Incongruity Question

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
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