[Patentpractice] Foreign Filing License Incongruity Question

Tue Aug 13 17:24:39 UTC 2024

I strongly recommend getting an Indian attorney to advise on that. Back when I was working for a big firm with clients who had facilities in India and the US, I remember our Indian counsel being much more cautious, particularly since Indian law could theoretically send an inventor to prison for violating the FFL rules.

Best regards,
Richard A. Schafer | Schafer IP Law
P.O. Box 230081 | Houston, TX 77223
M: 832.283.6564 | richard at schafer-ip.com<mailto:richard at schafer-ip.com>

From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> On Behalf Of Masson, Roger M. via Patentpractice
Sent: Tuesday, August 13, 2024 12:06 PM
To: Timothy Snowden <Timothy at thompsonpatentlaw.com>
Cc: Masson, Roger M. <RMasson at hinshawlaw.com>; For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com>
Subject: Re: [Patentpractice] Foreign Filing License Incongruity Question

He relevant Indian statute also says re FFL "This section shall not apply in relation to an invention for which an application for protection has first been filed in a country outside India by a person resident outside India" so what Timothy says as to assignments makes sense to me.

Roger M. Masson
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From: Timothy Snowden <Timothy at thompsonpatentlaw.com<mailto:Timothy at thompsonpatentlaw.com>>
Sent: Tuesday, August 13, 2024 10:23 AM
To: For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>>
Subject: Re: [Patentpractice] Foreign Filing License Incongruity Question

Hi Richard,

If I understand India's patent law correctly, the one subject to India law cannot cause an application to be made. There is no rule that I am aware of that they cannot assign their interest in intellectual property over to some other person.

Of course, if that other person happens to be under US law and not India law, then that person would follow the US law and file in the US first. Or, they could request an FFL from the US (without filing), and then file in India first (of course, with the latest link you posted I'm not sure about the advisability of that). If they filed in the US first, the person subject to India law could refuse to assist in causing an application to be made. For example, they could refuse to sign a Declaration of Inventorship. But if they had already signed an assignment of IP (e.g., pursuant to an employment contract, joint venture agreement, etc.), then the person subject to US law (and holding the assignment of IP rights from the person subject to India law) could file a substitute declaration...

In which case, based on what I (as a person not qualified to have an opinion on India law) can discern of India law, then the letter of the law has been followed, and a subsequent India patent (e.g., via PCT) would not necessarily be invalid, and the India person would not need to go to jail.

FYI, commentary I read from India lawyers indicated that the security law has not ever been known to be enforced, so we don't really know how the courts would apply it.

Hope those musings help ... these are NOT legal opinions and should not be relied on!

________________________________
From: Patentpractice <patentpractice-bounces at oppedahl-lists.com<mailto:patentpractice-bounces at oppedahl-lists.com>> on behalf of Richard Straussman via Patentpractice <patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>>
Sent: Tuesday, August 13, 2024 9:48 AM
To: Carl Oppedahl <carl at oppedahl.com<mailto:carl at oppedahl.com>>; For patent practitioners. This is not for laypersons to seek legal advice. <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

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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