Foreign filing licences at ten minutes to midnight
Most patent attorneys have to file applications from time to time with one or more foreign inventors. This leads to a practical problem if you know little or nothing about the patent laws of the inventor's home country. Why? Because several countries have restrictions on inventors filing abroad without permission. If you are faced with a non-negotiable deadline - e.g. it's ten minutes to midnight on the day of disclosure of an invention, you need to know if the filing you are about to make is likely to land your inventor in hot water.
An inventor may be under an absolute obligation to file first in his or her home country (let's call it Freedonia), or may be permitted to file abroad first provided that a foreign filing licence has been obtained in advance. Or if you're in luck, you may learn that Freedonia is generous with its technological secrets and takes no interest in where its inventors choose to file.
Some countries only impose restrictions on inventions with military or nuclear importance, while others take an equally dim view if a novelty musical toothbrush is the subject of a patent application filed abroad without permission.
What happens if you get it wrong? Some countries will allow you to retroactively correct a genuine mistake if you file abroad without permission, while in others there is no pardon for the crime ... and crime it most certainly is: the law will typically provide for both an eye-watering fine and harsh prison sentences for the hapless inventor (15 years in some jurisdictions), not to mention possible invalidation of any subsequently filed Freedonian patent application.
Advice from a competent Freedonian patent attorney is the safest bet, providing that you're not up against an urgent deadline, and time zones permit, and you have confidence that you are indeed asking someone competent.
If for some reason you can't contact a Freedonian colleague, information is surprisingly hard to find. The Freedonian Patent Office website, for instance, may give meticulous detail on all of the charming local filing requirements, e.g. forms notarised to apostille, drawings on Bristol board (remember that?), and a triple-spaced specification printed on lemon-coloured rice paper in 12.5 point Comic Sans font. But many patent office and patent attorney websites carry no guidance on whether local laws allow you to bypass their services entirely by filing abroad.
This Kat has been unable to find any comprehensive listing of all the countries that do have foreign filing restrictions or licence requirements, and perhaps more useful, a "whitelist" of the very many countries that have no such restrictions. The latter might be more useful because if your only foreign inventor is (say) Irish and you can see from a reliable list that Ireland has no foreign filing restrictions - and this Kat can reassure you that Ireland has no such restrictions for its nationals or residents - you're home and dry and can file where you please subject to your local laws.
Some online resources list the better known countries that do have some restrictions, with the USA, UK, France, Germany, China, South Korea, India, Canada and New Zealand all being mentioned as having some level of restriction, though the requirements vary widely. Some of the "whitelist" countries with no restrictions mentioned on the same listings include Japan, Mexico, Taiwan and Australia.
That brief summary has not been verified, and it leaves unmentioned eight of the G20 nations, most of the EU, and the vast majority of the WTO countries - an enormous knowledge gap (represented by the white area on the map below). Enormous for an attorney under pressure perhaps, but surely our readers know of a more comprehensive listing, or collectively the IPKat community can crowdsource a list of which countries do and don't have a foreign filing licence requirement?
If you can enlighten the IPKat with either (i) a link to a free, online resource having comprehensive information, (ii) a brief indication of the foreign filing restrictions for a country in which you have expert knowledge, or (iii) a correction to the map above, please do so either in the comments below or by emailing the IPKat with the subject line 'Foreign Filing', and a subsequent post will collate and share the knowledge, and may serve on some future date as a ready reference for despairing attorneys and applicants facing an imminent disclosure with a multinational group of inventors.
A brief history of Freedonia here
Not to be confused with Fredonia here
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| 35 USC 184 |
Some countries only impose restrictions on inventions with military or nuclear importance, while others take an equally dim view if a novelty musical toothbrush is the subject of a patent application filed abroad without permission.
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| Ernie forgot to check |
Advice from a competent Freedonian patent attorney is the safest bet, providing that you're not up against an urgent deadline, and time zones permit, and you have confidence that you are indeed asking someone competent.
If for some reason you can't contact a Freedonian colleague, information is surprisingly hard to find. The Freedonian Patent Office website, for instance, may give meticulous detail on all of the charming local filing requirements, e.g. forms notarised to apostille, drawings on Bristol board (remember that?), and a triple-spaced specification printed on lemon-coloured rice paper in 12.5 point Comic Sans font. But many patent office and patent attorney websites carry no guidance on whether local laws allow you to bypass their services entirely by filing abroad.
This Kat has been unable to find any comprehensive listing of all the countries that do have foreign filing restrictions or licence requirements, and perhaps more useful, a "whitelist" of the very many countries that have no such restrictions. The latter might be more useful because if your only foreign inventor is (say) Irish and you can see from a reliable list that Ireland has no foreign filing restrictions - and this Kat can reassure you that Ireland has no such restrictions for its nationals or residents - you're home and dry and can file where you please subject to your local laws.
Some online resources list the better known countries that do have some restrictions, with the USA, UK, France, Germany, China, South Korea, India, Canada and New Zealand all being mentioned as having some level of restriction, though the requirements vary widely. Some of the "whitelist" countries with no restrictions mentioned on the same listings include Japan, Mexico, Taiwan and Australia.
That brief summary has not been verified, and it leaves unmentioned eight of the G20 nations, most of the EU, and the vast majority of the WTO countries - an enormous knowledge gap (represented by the white area on the map below). Enormous for an attorney under pressure perhaps, but surely our readers know of a more comprehensive listing, or collectively the IPKat community can crowdsource a list of which countries do and don't have a foreign filing licence requirement?
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| Red: restrictions. Green: no restrictions. Blue: very wet. Help colour the map |
A brief history of Freedonia here
Not to be confused with Fredonia here
