Where to File Your Patent Application First: The U.S. or Overseas

If you plan to file for a patent both in the United States and in another country, planning ahead and thinking strategically will help you avoid pitfalls down the road. You will need to follow United States law on filing for patent protection, but you will also need to comply with foreign law in whichever international country or countries you wish to file in.

Planning First – Ask the Right Questions

To determine where and what to file when, here are a few pointers to consider.

1. First, where was the invention made, or put another way, where did the inventive activity occur? If it was made in the United States, the inventors should file a patent application in the United States. If the invention was made abroad, the inventors should look into the requirements in the country where the invention was made.
2. Second, where are the inventors from and where do they live? Many countries, including the United States, have specific rules about either citizenship or residency status of the inventors. The situation becomes more complicated when you have multiple inventors who are from different countries.
3. Third, what is the subject matter that is being disclosed? As discussed later in this article, the subject matter can be subject to secrecy rules, pursuant to 35 U.S.C. 181, and export control regulations, which is why it is important to analyze the nature of the invention and information.

Filing in the US and Getting a Foreign Filing License

If an invention was made in the United States, then you need to obtain a foreign filing license before you file in another country. In most cases, a foreign filing license is automatically granted upon filing of the patent application in the US. Furthermore, there are several situations in which you may not need a foreign filing license if:

• The invention was not made in the United States; or
• You file for a foreign patent once 6 months has elapsed between the time you file in the US and the time you file internationally, and the invention is not subject to a secrecy order.

Secrecy, Export Controls, and Penalties

Being cognizant of the timing of patent filing requirements and ensuring you complete the necessary steps is crucial to successfully navigating the path for your business goals. The United States prevents inventions that are subject to secrecy requirements from being shared with other countries, even for purposes of filing in those countries.

The basis for such secrecy is 35 U.S.C. 181, which states in general that where granting a patent or disclosure by publishing a patent application of an invention the government has a property interest in and disclosure would be detrimental to the national security, the invention will be kept a secret. However, it cannot be kept secret for longer than one year, unless renewed by the Commissioner of Patents. If anyone willfully discloses the invention or willfully submits a patent application in a foreign country in contravention of the secrecy order, they could be subject to strict fines and/or imprisonment.

You are also subject to export control regulations that dovetail with 35 U.S.C. 181 and 184. You need a license from the Commissioner of Patents under Section 184 before filing in a foreign country if the invention was made in the United States and an application was filed less than 6 months prior to the date on which the application is to be filed, or no application has been filed in the United States. If a secrecy order was made under Section 181, an application cannot be exported to or filed in another country. The license from the Commissioner for Patents serves a dual purpose of both authorizing the export of technical data to a foreign country for purposes relating to the preparation, filing or possible filing and prosecution of a foreign application and also in tandem complying with the various export controls regulations set forth in:

• International Traffic in Arms Regulations of the Department of State
• Export Administration Regulations of the Bureau of Industry and Security, Department of Commerce
• Assistance to Foreign Atomic Energy Activities Regulations of the Department of Energy.

Technical data relating to sensitive nuclear technology or relating to arms, ammunition, or the implements of war will be subject to the export control regulations above. Data contained in an application abroad that is comprised of wholly foreign technical data does not require an export license where the data is being sent to the foreign inventor who will then file in the United States. An important takeaway is that first filing an application in the United States will generally include a license to file in a foreign country upon obtaining the filing receipt or other official notice.

Planning ahead and choosing the right path is crucial in protecting your invention. To get the most benefit and global coverage, it is best to consult an experienced patent attorney familiar with filing in the US and internationally.