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U.S. patent practitioners are aware that 35 U.S.C. � 184 forbids filing a patent application in a foreign country on an invention made in the United States within six months of the U.S. filing — unless the Patent and Trademark Office first issues a foreign filing license. With the rise of multinational corporations, it is more common to see a U.S.-based corporation asking the U.S. patent practitioner to first file an application in the U.S. although some or all of the inventors are foreign nationals working in their own countries. That is, the invention is developed partly or wholly in a foreign jurisdiction. Many of those jurisdictions have foreign filing rules similar to those in the United States. The results of a recent survey of practitioners in a number of jurisdictions revealed that the jurisdictions may be classified under three general categories: (1) those that have no such limitations; (2) those that have some limitations; and (3) those that have strict limitations. In Austria, Brazil, Canada, Germany, Hungary, Ireland, Japan, Mexico, Portugal, South Africa, Sweden, the Benelux Patent Office and Taiwan, there are no restrictions against first filing an application in another country on an invention made in those countries. SOME RESTRICTIONS Spain, Korea and Israel impose some restrictions on foreign filing. Spain requires that if a patent application is first filed in Spain, the application may not be filed in a foreign jurisdiction until two months have elapsed from the date of the Spanish filing, unless authorization is obtained. The penalty for noncompliance is not indicated in the statute. If Spain is not the country of first filing, there appears to be no restriction against later filing the application in Spain. In other words, according to the Spanish practitioner, the invention could be made in Spain and the application first filed outside Spain and then filed in Spain. Israel has no restrictions on foreign filing unless the invention relates to arms and ammunition, has military value or relates to nuclear energy. If it does, the applicant must request prior written permission from the Minister of Defense or wait six months after the filing of the application in Israel before filing in another jurisdiction. Israel’s requirement differs from the U.S. requirement in that, essentially, the United States requires the government always to make the first determination about whether the invention has military value or relates to nuclear energy, whereas in Israel, the applicant makes the determination and thereby takes on the responsibility of potentially violating the rule. South Korea does not require that an application be first filed domestically, but the Korean government may issue a secrecy order preventing foreign filing if the invention is defense-related. STRICT COUNTRIES China, France, Greece, Italy, Poland, the Russian Federation, the United Kingdom and the United States all require that an applicant applying for a patent on an invention made within that jurisdiction obtain a foreign filing license prior to filing the application in a foreign jurisdiction. In China, once a foreign filing license is obtained, the applicant must then use a patent firm authorized by the Chinese government to handle foreign applications. However, the penalty for not filing first in China on an invention made in China is not specified in the statute and there appear to be no cases addressing this issue. Although Greek law does not address foreign filing, the Greek commissioner of patents is reported to be of the opinion that an application must be filed first in Greece. This opinion was not accompanied by a recitation of the law and there appear to be no penalties prescribed by law. French patent law does not restrict the first filing of an application outside France, but French criminal law, as interpreted by the French Army administration, does. Authorization to first file a patent application outside France may be procured by supplying at least an abstract and drawings describing the invention. Failure to follow this law may result in criminal sanctions, including imprisonment. Similarly, the United Kingdom requires that if an application is to be filed first outside the UK, a foreign filing license is required. Such a license may be obtained generally within a matter of days after the claims and drawings have been provided to the UK patent office. Noncompliance may also result in criminal sanctions. Russian law also requires that an application be filed first in the Russian Federation and that after three months the application may be filed outside the Federation. No additional foreign filing license is required, provided that the invention cannot be considered to include military or dual technology or other technology involving state security. It should be noted that if the invention does not involve state security, no penalty for noncompliance is indicated in the statute. Polish law requires that an inventor citizen file a patent application first in Poland, but the same application may be filed simultaneously (the same day) in another jurisdiction. Italian patent law provides for criminal penalties if an application for an invention made in Italy is first filed in a foreign country without the requisite authorization. Such authorization requires the submission of the specification and claims. Alternatively, the application may be first filed in Italy and then may be filed in another jurisdiction if no restriction is made by the Ministry of Industry, Commerce and Handicrafts within 90 days of the Italian filing. Because of the many variations in foreign filing requirements, it is prudent for a U.S. practitioner to seek the advice of foreign counsel prior to filing a patent application in the United States when the subject invention of that application was made partly or wholly in another jurisdiction. Thomas Turanois a registered patent attorney, a partner with Boston’s Testa, Hurwitz & Thibeault, LLP, and an adjunct professor at Suffolk University School of Law.

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