[Patentpractice] Foreign Filing License Incongruity Question

[Scott Nielson]

I've had to deal with this issue in the context of Chinese/U.S. law (Chinese inventors in China and US inventors in the U.S.). In that case, I drafted the patent application and had all the inventors review it. Once they approved it, I sent it to a Chinese law firm who translated it and filed a request with CNIPA for a Chinese filing license (I believe it's called a security clearance). The Chinese firm did not file a Chinese patent application.

With the Chinese security clearance in hand, I then filed the U.S. patent application. Upon receiving the filing receipt granting the foreign filing license, the Chinese law firm filed a Chinese application claiming priority to the U.S. patent application. Technically, there was no need to file the Chinese application at that time (could have waited and filed a PCT and entered the Chinese national phase), but that was the arrangement between the two parties who collaborated to develop the technology.

Regarding U.S. law, there are two things to keep in mind. The first is that there are export laws that are separate from patent laws. These are things like EAR, ITAR, etc. These prevent U.S. companies from exporting certain technology (usually military, nuclear, etc.). These are the laws that prevent companies from collaborating with other people/companies outside the U.S. or foreign nationals inside the U.S. As long as a U.S. company is not violating these laws, they can collaborate with foreign companies as much as they want including developing new technology/inventions. Most companies who are subject to export restrictions are well aware that they are subject to export restrictions and act accordingly.

The second is that U.S. patent law requires an FFL to file a foreign patent application for an invention that was made in the U.S. A U.S. company does not need an FFL to collaborate with a company or person on the technology. It needs it to file a foreign patent application.

I was able to draft the patent application and have the inventors in China and U.S. review it is because the subject matter of the application is not export restricted by the U.S. or China (I relied on the Chinese company and law firm to confirm Chinese law). The Chinese law firm was able to use the draft application to obtain a Chinese security clearance because they were not filing a patent application. Once I filed the U.S. application and received an FFL, then the Chinese firm was able to file the Chinese patent application. I probably could have done the reverse (get a U.S. FFL first, file in China and get a security clearance, and then file in the U.S.; I might do this next time given that CNIPA takes its sweet time deciding security clearance requests).


Scott Nielson

801-660-4400

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From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> on behalf of Richard Straussman via Patentpractice <patentpractice at oppedahl-lists.com>
Sent: Tuesday, August 13, 2024 7:38 AM
To: 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: [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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