US filers are very familiar with the requirement that if an invention is made in the US, the applicant may only file a patent application on that invention in a non-US country if the applicant has obtained an FFL (foreign filing license) from the USPTO.
From time to time the question will arise what if the invention is jointly made by people in some country outside the US and people in the US? Each country has laws about where you can file first and what you must do before you can file elsewhere.
The nice folks at WIPO have developed a handy web page that summarizes FFL requirements around the world.
This web page at WIPO’s web site does not, of course, give legal advice as to how to deal with complicated problems where some of the inventors are in one country and some of the inventors are in a different country. I can describe some of the approaches that some practitioners use to try to solve these problems.
For example. Invention made by people in China and people in the US. One approach that some practitioners use is to apply for a faxed foreign filing license (“FFFL”) from the USPTO. Once you have the FFFL, file in China. Eventually the Chinese patent office will grant an FFL in China. At that point, file the US patent application, claiming priority from the Chinese application.
But it is easy to devise fact patterns where there seems to be no way to proceed without someone being at risk of getting into trouble. Particularly vexing is the fact pattern where one of the joint inventors is in Russia and another is in the US.
The hapless practitioner who has struggled with such fact patterns might throw up his or her hands and simply instruct the inventors to never do any inventing except when located on ships in the ocean beyond the territorial limit of any country.
What complicated fact patterns have you run into? How did you solve them? Please post a comment about this.
When the invention was made in the US but assigned to a Singaporean Corporation, the Singaporean patent office has indicated that an foreign filing authorization should be obtained from them before filing in the US. The Singaporean law refers to a “person resident in Singapore” which can apply to a legal entity as well as a human being.
Another issue was whether or not a design patent filed in the US counts as an “invention” in Singapore subject to the foreign filing requirements. We came to the conclusion that it did not, because that “invention” would not be patentable subject matter in Singapore.
This is extremely useful. Thanks for notifying us. Isn’t the answer for diversity of inventorship to file a PCT application with the IB?
On a related topic, it seems to be a violation of US law for US inventors to travel to foreign countries to make presentations. I mention this because I had an inventor who did this. As far as I could tell at the time what was needed was an export license.
You asked “Isn’t the answer for diversity of inventorship to file a PCT application with the IB?” I’d guess not. Probably what is needed in any diversity-of-inventorship situation is to obtain advice of competent counsel in each of the countries involved.
“The hapless practitioner who has struggled with such fact patterns might throw up his or her hands and simply instruct the inventors to never do any inventing except when located on ships in the ocean beyond the territorial limit of any country.”
Not quite so easy. See Admiralty Trademarks, .
URL for Admiralty Trademarks is http://www.keganlaw.com/KeganLaw-Elan/Clipper_files/12-AdmiraltyTm.pdf
What do you do if one inventor resides in India and another in China ?
To clarify: The application is to be filed in China and the joint inventors are from India and China. We are requesting a Foreign Filing License from India and will proceed with filing in China, however, the Indian Patent Office usually takes 7-10 days and we want to file within a week. Any suggestions?