[Patentpractice] Foreign Filing License Incongruity Question

Wed Aug 14 01:18:50 UTC 2024

Hi All,

This is an issue that FICPI is looking at within its International Issues Study and Work Committee, which I am a member of.

This is a work in progress, but we hope to achieve 2 things: 1) urge more difficult countries to allow compatibility so that “impossible” situations to become possible to solve, and maybe to reduce the 7 or so different types of trigger; and 2) that when strict compliance is not taken then forgiveness is possible (eg. a retroactive FFL when the technology is not one that would not be permitted to be exported) and preferably easily achievable.

So, I can say this is being looked at and worked on, but I can also say, don’t hold your breath. Indeed, don’t rely on a scuba tank, the air will likely run out first.

BTW, there is no such requirement in Australia. Just saying.

Regards

Rohan Wallace
Principal  BEng DipIPPrac FIPTA
Patent and Trade Mark Attorney
Australia and New Zealand
[cid:image001.png at 01DAEE2A.1887EFD0]
T: +61 8 6468 0932    F: +61 8 9467 0514

www.ghfip.com.au<http://www.ghfip.com.au/>

This email is confidential, and may be subject to client-attorney privilege. If you have received it in error, we request that you contact us immediately, and delete all records of the message received.

From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> On Behalf Of Carl Oppedahl via Patentpractice
Sent: Tuesday, August 13, 2024 10:05 PM
To: For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com>
Cc: Carl Oppedahl <carl at oppedahl.com>
Subject: Re: [Patentpractice] Foreign Filing License Incongruity Question

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/>

-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://oppedahl-lists.com/pipermail/patentpractice_oppedahl-lists.com/attachments/20240814/faf90ec3/attachment.html>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: image001.png
Type: image/png
Size: 8443 bytes
Desc: image001.png
URL: <http://oppedahl-lists.com/pipermail/patentpractice_oppedahl-lists.com/attachments/20240814/faf90ec3/attachment.png>