APIF IP LAW BUGLE April 2023 | ISSUE 45
We are proud to share a republication of the Association of Intellectual Property Firms (AIPF) article on Foreign Filing Licenses, co-authored by our own Dr Mark Houghton, Director of AIPF and Chair of the AIPF Patent Committee. The original article can also be found on the APIF website here; by: Ping Gu (Zhong Lun Law Firm), Mark Houghton (Patent Outsourcing Limited), Jocelyn D. Ram (Fountainhead Law Group), and Pankaj Soni (Remfry & Sagar).
With the prevalence of multi-national companies and virtual collaborative tools, inventions today are frequently conceived of by a team of inventors located in multiple countries. The rise of international joint inventorship may raise issues that may not have been contemplated in the past. Many countries have government regulations protecting national security interests, which may require applicants to receive government permission before filing a patent application outside their country. Confusion may arise when the inventorship includes residents of multiple countries that have competing laws, such as the U.S., China, and India. This article will explore the practical implications of how to address this problem when each country says “Me, first!”.
In dealing with international foreign filing requirements, you must consider: 1) where the invention was made/conceived; 2) where the inventors reside, both currently and/or during the entire time of the invention conception or possibly before; 3) where the inventors are citizens; and 4) if the technology relates to national security or state secrets. Every country has different rules and they may sometimes conflict with each other. For further information, the World Intellectual Property Organization (WIPO) presents a listing of international filing restrictions here. Interestingly, if you are filing a PCT international application, WIPO notes if you have not yet acquired required national permissions, “you should not use ePCT to prepare your international application, since the draft details are held on servers operated by the International Bureau, rather than your computer or the servers of the relevant national Office.”
U.S. FOREIGN FILING LICENSE
Under U.S. law, according to 37 C.F.R. 5.11, for an invention that was “made in the United States,” a license under 35 U.S.C. 184 “is required before filing any application for patent, including any modifications, amendments, or supplements thereto or divisions thereof, or for the registration of a utility model, industrial design, or model, in a foreign country or in a foreign or international intellectual property authority (other than the United States Patent and Trademark Office acting as a Receiving Office for international applications (35 U.S.C. 361, 37 CFR 1.412 ) or as an office of indirect filing for international design applications (35 U.S.C. 382, 37 CFR 1.1002 ))” unless an application was filed in the U.S. more than 6 months prior or no application has been filed in the U.S.
From the perspective of a U.S. practitioner, let’s consider Scenario A: There are 4 inventors who are all employees of a large international company with headquarters based in Germany, and the inventors have assigned their rights to the company (hereinafter “Assignee”). 2 inventors are citizens and residents of India, and 2 inventors are citizens and residents of the U.S. The invention was conceived jointly by all 4 inventors using virtual tools, such as video conferencing, on their internal company-wide platform. The Assignee wishes to pursue patent protection solely in the U.S.
Scenario A1: There is no U.S. statutory bar date.
Before filing a non-provisional application in the U.S., an Indian foreign filing license should be requested. In order to file this request, a “brief description of the invention” of not less than 1000 words is required, but not necessarily the entire draft of the patent application. A foreign filing permission (FFP) request in India is generally granted within 3 weeks and cannot be expedited. Logistically, an original Power of Authority (POA) is required for the filing of a FFP request, thus it is suggested that a general POA be on file with your Indian foreign associate before the deadline approaches. Note, it is unclear if filing a U.S. provisional application would require receiving an Indian foreign filing license first.
Scenario A2: There is a bar date in the U.S.
It may be advisable to file a provisional Indian application (which will not be public) before filing a U.S. non-provisional application. However, in order to file a provisional Indian application, a U.S. foreign filing license must first be granted. Applying for a U.S. foreign filing license is surprisingly a quick, easy process. A petition for an expedited foreign filing license under 37 C.F.R. § 5.12(b) and § 5.13 can be filed by fax with a draft copy of the application and the request will generally be granted in 1-2 days. If you do file an Indian provisional application, make sure to include this priority on the Application Data Sheet (ADS) when filing the U.S. non-provisional application. Thus, in this case, you would 1) file an U.S. FFL request, 2) file an Indian provisional application, 3) file the U.S. non-provisional application claiming priority to the IN provisional application.
If you mistakenly did not claim the Indian provisional application when filing the U.S. non-provisional application, you may be able to correct this by filing a Petition to Accept an Unintentionally Delayed Claim for Right of Priority. However, this has a large fee (currently $2100) and the error must have been unintentional.
If you mistakenly filed the Indian provisional application (or any other foreign application) without first requesting and receiving a U.S. foreign filing license, you may lose all rights to pursue the invention in the U.S. It is possible to file a Petition for a Retroactive License in the U.S. under 37 C.F.R. § 5.25 and 35 U.S.C. § 184, however this must include a factual “explanation of why the material was filed abroad through error without the required license under § 5.11 first having been obtained.”
Scenario A3: If there are no U.S. inventors, but only the 2 inventors “residing in India,” an Indian foreign filing license would likewise be necessary before filing a non-provisional application in the U.S.
Similar issues arise when there are joint inventors located in the U.S. and China. Consider Scenario B: There are 3 inventors who are all employees of a large international company with headquarters based in the U.S., and the inventors have assigned their rights to the company (hereinafter “Assignee”). 2 inventors are citizens and residents of China, and 2 inventors are citizens and residents of the U.S. The invention was conceived jointly by all 4 inventors using virtual tools, such as video conferencing, on their internal company-wide platform. The Assignee wishes to pursue patent protection solely in the U.S.
Before filing a non-provisional application in the U.S., a Chinese foreign filing license should be requested. In order to file this request, a technical disclosure must be submitted to the CNIPA in the Chinese language. Once the Chinese FFL is granted, then the Applicant can file a non-provisional application in the U.S. (or other foreign countries). Alternatively, one can file an application first in China (in the Chinese language) and request a FFL simultaneously. However, before filing a Chinese application, a U.S. FFL must be granted first. Another option that avoids the need for a Chinese translation (which may require significant cost and time) is to file a PCT application in English and elect CNIPA as the receiving office. In this case, an FFL is considered as being automatically requested by the Applicant but still needs to be reviewed and granted.
INDIAN FOREIGN FILING LICENSE
In the past five years, 2017-2022, the total number of foreign filing license (FFL) requests filed in India has increased from 4,640 in 2017-18 to 8,421 in 2021-22. This growth is indicative of the innovation that is being generated and recognized in various R&D centers in India. Therefore, knowledge of India’s requirement to obtain permission to first-file an application outside India is necessary to create an optimal patenting strategy. This becomes more critical when one incorporates the fact that there is no procedure to cure the defect of not obtaining the FFL, and there is a possible criminal penalty (which has never been used) associated with non-compliance.
Statutory provisions for foreign filing license (FFL) in India:
In December 2001, a Joint Committee Report presented to the Rajya Sabha (Upper House) reiterated the need for screening sensitive information from being first-filed in a country outside India. As per the Committee's suggestion, the FFL requirement was re-introduced into the patent statute and, currently, Section 39 of Indian Patents Act (the “Act”) recites:
(1) No person resident in India shall, except under the authority of a written permit sought in the manner prescribed and granted by or on behalf of the Controller, make or cause to be made any application outside India for the grant of a patent for an invention unless—
(a) an application for a patent for the same invention has been made in India, not less than six weeks before the application outside India; and
(b) either no direction has been given under sub-section (1) of section 35 in relation to the application in India, or all such directions have been revoked.
(3) This section shall not apply in relation to an invention for which an application for protection has first been filed in a country outside India by a person resident outside India. (emphasis added).
A plain reading of the above section suggests that a person “resident in India” cannot first- file a patent “application outside India” without seeking written permission from the Indian Patent Office. However, the definition of these two phrases i.e., “resident in India” and “application outside India” is not present in the Act or the accompanying Rules which adds a layer of confusion (and complexity) surrounding the FFL criteria. Consider the following two scenarios:
1. The inventor, a citizen of India, was physically present in India at the time the invention was conceived and worked upon; and
2. The inventor, a citizen of India, was physically present outside India at the time the invention was conceived and worked upon,
In the above situation, who has an obligation to comply with the FFL’s residency requirement? There is no clarification in the Act, there has been no notification issued from the Indian Patent Office, nor is there any judicial pronouncement on this issue. Therefore, as a matter of practice, the most accepted interpretation of the residency requirement is based on reading the term “resident in India” in line with Section 6(1)(a), (c) of the Income Tax Act, 1961, and the Foreign Exchange Management Act (FEMA). These provisions classify that an individual is said to be resident in India in a fiscal year, if he is in India (i) for more than 182 days, or (ii) for an aggregate stay of 365 days or more in the preceding four years, and is in India for sixty days or more in that year.
Therefore, under this interpretation, if, in scenario 1, the inventor has never left India he/she is required to obtain an FFL. The nuance of the above interpretation kicks in for scenario 2 where the inventor has been outside India to collaborate on the invention. In such a situation, each inventor (or the potential applicant) must determine how long the inventor has resided in India in the past year and/or past four years, to see if the FFL permission is required. This determination is in line with a statutory provision, albeit a different one, and is independent of where the invention was conceived. These scenarios 1 and 2 also currently account for, perhaps 100% of the situations requiring some form of FFL permission.
It is evident that if the inventor wants to first-file an application in another jurisdiction, then an FFL permission may be required as noted above. However, what needs to be done if the inventor wants to file a PCT application and designate India as the receiving office? Here, the term “application outside India” becomes operative and, unfortunately, the definition of this phrase is not present in the Act or the accompanying Rules. Fortunately, the requirement of what is an application outside India was interpreted by the Delhi High Court in the matter Puneet Kaushik & Anr. vs Union Of India & Ors, 2014 SCC OnLine Del 7255.
In that case, an International PCT application was filed in the Indian Patent Office (India) with New Delhi as the PCT receiving office. The applicant requested the Patent office to provide them with the International application filing number considering the filing date in India (Sept. 14, 2012) as the application filing date. However, the Patent Office denied the request and took the position that the PCT application could not be taken on record unless the application is processed. Aggrieved by the same the applicant approached the Delhi high court and requested them to Issue a writ of mandamus in favour of them by ordering the Patent Office to provide them the international application number with a filing date as September 14, 2012, and had also requested the court to declare that a PCT application with INDIA as the receiving office is not a “foreign application” that comes under the purview of Section 39.
The single judge disagreed. The Division Bench (on appeal) agreed with the reasoning provided by the single judge that a PCT application filed in India, with India as the receiving office would also be considered a “foreign application” and, therefore, the mandatory requirement of obtaining an FFL under Section 39 should be complied with. Since the FFL order was issued on September 27, 2012, the court ordered the Patent Office to allot that date as a PCT filing date.
Some other scenarios where the FFL requirement is triggered, are:
1. A continuation-in-part application (or equivalent) is being filed in a foreign jurisdiction and the additional contribution is from an inventor who satisfies scenarios 1 and 2.
2. An inventor meeting scenarios 1 or 2 is being added to a foreign application because his/her contribution to the new/amended claims has been identified.
3. Additional disclosure is being added to a (in process) first-filed application by inventor(s) for whom we have already obtained an FFL. The new/added disclosure will require permission from the IPO before adding it to a first-filed application.
What happens if the FFL requirement is not met? As things stand today (changes are expected soon), the obligation falls on the inventor, and an inventor who fails to comply with such requirement would be liable under Section 118 of the Act, which includes a jail term of two years and/or a fine. Also, the patent application in India would be considered abandoned if the FFL criteria is not satisfied, thereby creating a cascading effect on the related applications outside India.
India FFL process:
Any inventor/applicant who falls under the above criteria should procure an Indian foreign filing license before first filing a patent application in a country other than India. The foreign filing license can be obtained by filing an official request at the Indian Patent Office (IPO) along with the required statutory fee and a summary of the invention that discloses the subject matter of the invention.
The IPO scrutinizes the subject matter of the invention filed along with FFL request and determines if the invention is (i) related to defence, or (ii) related to atomic energy. If the answer is negative, then the IPO processes the FFL application and grants it within 21 days from the date of filing the application. If the subject matter falls under the above criteria, the IPO seeks guidance from the Defense Research and Development Organization (DRDO) or Department of Atomic Energy (DAE) to decide whether the patent application should be barred from publication and a secrecy directive should be issued. The IPO refers the FFL matters to the DRDO and DAE and seeks their opinion only when a need for the same arises and also after the completion of an internal examination from their part. The whole Indian FFL process is given below in the form of the flow chart for illustration purposes:
(i) Referrals to the Defense Research and Development Organization:
The IPO after a preliminary examination of the FFL application decides whether the application is related to defence are not. The subject matter related to defence are referred to DRDO for further examination and to seek expert opinion. The DRDO upon receipt of the referral letter from IPO takes up the matter for expert examination and gives its final verdict on whether the subject matter is related to defence or not to the IPO. After receiving the final verdict from the DRDO, the IPO issues an FFL or a secrecy direction. The whole process of DRDO review delays the issuance of FFL by approximately 6-12 months.
The analysis of data from the past five years' IPO Annual Reports shows that the number of referrals to the DRDO has gone up from 173 in 2017-18 to 1149 in 2021-22. In terms of percentage, there has been a reduction in such referrals - from 72% of requests being referred in 2017-18, down to 55% in 2021-22. The DRDO has also increased its clearance percentage from 27% in 2017-28 to 34% in 2021-22. However, recent years have seen more FFL refusals by the DRDO with 1% rejections in 2017-18 increasing to 10% of FFL requests filed in 2021-22.
(ii) Referrals to the Department of Atomic Energy:
The IPO is also bound to check whether the FFL is application is related to atomic energy. In such cases, the matter is referred to the DAE for further examination and to seek expert opinion. The DAE, upon receipt of the referral letter from IPO takes up the matter for expert examination and gives its final verdict on whether the subject matter is related to atomic energy or not. The IPO on getting its final verdict from the DAE issues an FFL or a secrecy direction.
The analysis of data in the past five years' IPO Annual Reports shows that the number of DAE referrals has gone up from 205 in 2017-18 to 846 in 2021-22. The DAE had only in 1.1% of the cases referred to it by IPO in the year 2021-22 as compared to 0.5% in 2017-18. Therefore, the IPO is more circumspect in requesting DAE’s opinion on matters related to atomic energy. The clearance rate is high in DAE referral matters too, however, the delay caused by the whole process stalls the patent filing process across the globe. The delay in DAE matters is comparatively less when compared to the DRDO matters as the DAE is bound by a statutory timeline of 3 months.
Separately, it is worth noting that while a refusal by the DRDO may be challenged/appealed by filing a request for reconsideration once every 6 months, a refusal by the DAE is not appealable and is a final verdict on the non-allowability of an invention.
Thus, in order to manage the FFL process, as a first step, check for residency (not citizenship or place of conception) of the Indian inventors before first-filing any patent application. Second, before filing the FFL request, check the invention summary to understand if the description suggests that it would raise a reasonable likelihood of scrutiny of the invention as being related to defence or atomic energy. If there is a likelihood of such a scrutiny, discuss possible alternative options with your counsel. Finally, continue to evaluate the need of obtaining an FFL in case Indian resident inventors are added to an existing application.
CHINA FOREIGN FILING LICENSE
The requirement for a foreign filing license in China is dependent on whether an invention or utility model is completed within the country. If the completion occurs in China, the applicant must first seek a confidential examination from the China National Intellectual Property Administration before submitting an application outside of China. This is similar to the foreign filing license requirement in the United States. The confidential examination, also referred to as "foreign filing license" for purposes of this discussion, is mandatory in the interest of national security and essential concerns.
Article 19 (1) of China Patent Law provides that any entity or individual shall request a confidential examination from the China National Intellectual Property Administration (CNIPA) before filing a foreign patent application for an invention or utility model completed in China.
Article 8 of Implementation Regulations for the Patent Law of the People’s Republic of China provides that “completed in China” means that an invention or a utility model patent whose substantive contents of the technical solution are completed in China.
Under the law and regulation, the foreign filing license requirement only covers invention and utility model patent applications. Therefore, applicants for design patent applications completed in China are not required to apply for a foreign filing license in advance and are allowed to file a design patent application outside of China directly.
Furthermore, this requirement applies to all individuals and entities, whether they are Chinese or foreign. The Third Amendment to the China Patent Law in 2008 brought about this change, shifting the scope of the provision from "Chinese entity or individual" to "any entity or individual." This amendment was necessary due to the rising number of foreign patent applications and the crucial role of science and technology in national security.
In addition, the foreign filing license requirement is not determined by the inventor's nationality or residency. The determining factor is the location where the invention or utility model is completed. For example, if a Chinese citizen who completes the invention or utility model outside of China, he is not required to obtain a foreign filing license before filing a patent application in a foreign jurisdiction. In contrast, if a US citizen completes the substantive contents of an invention or utility model during his visit in China, he is subject to the Chinese foreign filing license requirement.
Submit Request for Foreign Filing License
The following are the ways in which applicants can request a foreign filing license:
1) Submit a separate request for foreign filing license without a counterpart Chinese application: For the applicant who completes the substantive contents of the technical solution in China and wants to file an invention or utility patent application in a foreign jurisdiction directly without a Chinese counterpart application, the applicant must submit a Request Form of Confidential Examination for Foreign Patent Application ("Request Form”), along with a detailed description of the technical solution in Chinese before the foreign filing. The Request Form and the description must be filed in paper form. In addition, the description shall be identical to the foreign patent application, and includes the title, field, background, specification, figures and embodiments of the invention or utility model. The applicant is also allowed to submit a foreign language version of the description, but it is not mandatory.
2) Submit a request simultaneously or after a counterpart Chinese application is filed: For the applicant who has a counterpart Chinese patent application, he or she is required to submit the Request Form, electronically or in paper form, prior to any foreign patent application, and the description of technical solution is not required.
3) File an international PCT application and designate CNIPA as the receiving office: A request of confidential examination shall be deemed to have been submitted simultaneously if the applicant files an international PCT application with CNIPA as the receiving office.
Process of Examination
If an applicant submits a separate request for foreign filing license without a Chinese application, or submits a request simultaneously or after a counterpart Chinese application, the examiner will conduct a preliminary examination on the formality of the request and then the technical solution. If the documents do not satisfy the formality requirements, the examiner shall notify the applicant that the request is deemed not to have been submitted. In that case, the applicant could resubmit a request with documents satisfying the requirements.
Following the preliminary examination, the examiner will promptly notify the applicant that they can file a foreign application if there is no need to keep the technical solution confidential. However, if the technical solution must be kept secret for national security or vital interest reasons, the examiner must issue a Notice of Confidential Examination for suspending the foreign application within four months of the request submission. If the examiner does not issue the Notice within four months, the applicant may file a foreign patent application.
If the examiner issues the Notice of Confidential Examination for suspending the foreign application, a further confidential examination will be conducted. The examiner must issue the Decision on Confidential Examination based on the further examination within six months of the request submission. During this further examination, the examiner may seek assistance from experts in the relevant field. If the Decision is not received within six months of the request submission, the applicant may file a foreign patent application.
If an applicant filed a PCT application with CNIPA as the receiving office, and the technical solution does not need to be kept confidential, the examiner will process the application under normal PCT procedures. However, if the examiner decides that the technical solution must be kept secret for national security reasons, they will issue a Notice of Non-transmission of the Registration Copy and Search Copy within three months of the filing date. This notice will inform the applicant and the International Bureau that the international patent application will be terminated.
Violation of Foreign Filing License
If an applicant violates the foreign filing license requirement, CNIPA may refuse to grant the counterpart Chinese patents or invalidate already issued patents. There are no remedies available for failing to comply with this requirement. Therefore, failure to file a request, even in cases where the technical solution does not need to be kept confidential under a confidential examination, may lead to the loss of a Chinese patent. Despite several invalidation cases initiated since 2008 based on the violation of the foreign filing license requirement, the CNIPA issued its first invalidation decision (Invalidation Decision No. 55586) in 2022. The case involved an invalidation request against a utility model patent filed in 2017 and granted in 2018. After an oral hearing, CNIPA concluded that the technical solution in the patent was exactly the same as that in the U.S. patent, and the applicants failed to comply with the confidential examination requirement before filing a corresponding U.S. patent application in 2016.
The primary issue in the case was to determine whether the substantive content of the utility model was completed in China or a foreign jurisdiction. The CNIPA concluded that the invalidation petitioner met the initial burden of proof by presenting evidence that the patent owner was a resident of China, and all inventors were Chinese citizens, indicating a high probability that the utility model was completed in China. Subsequently, the burden of proof shifted to the patent owner to prove that the invention was completed outside of China. The evidence of one inventor travelling to the U.S. and stayed there for only ten days, was deemed inadequate to demonstrate that the substantive content of the utility model was completed outside of China. Additionally, it was considered implausible for the inventor to complete the utility model and file the U.S. patent application within such a short period.
Therefore, the CNIPA invalidated the target patent in its entirety as the patent owner failed to comply with the confidential examination requirement.
Conclusion and Consideration for Applicants
If a patent applicant develops the substantive contents of their technical solution in China and intends to file for an invention or utility patent application in a foreign jurisdiction, they must request a foreign filing license before doing so. To determine whether the technical solution was completed in China, the applicant should evaluate the location where the substantive contents of the invention were completed. Although the provision itself does not mention the residency or nationality of the inventors, CNIPA may consider such evidence to establish the actual location of completion.
For applicants subject to this provision, it is essential to submit the request for a foreign filing license as soon as possible. The statutory timeline for the examination is 6 months and there is no expedited procedure for such requests, and no remedy is currently available for failure to comply with this requirement in China.
EUROPE FOREIGN FILING LICENSE
European Patent Office
This particular portion of the article focuses on the most sensitive issue regarding foreign filing, on the basis that it provides the underlying rationale, in most jurisdictions, for the restrictions. These are national security requirements.
The National security requirements for filing patents at the European Patent Office vary depending on the country of origin of the applicant and the nature of the invention. The European Patent Office (EPO) is not a government agency and has been established by an international treaty. In general, the EPO does not perform any screening for national security issues during the patent application process, but it is the responsibility of the applicant to ensure that the invention is not classified as a national security threat, or at least the unauthorized disclosure of that material, maybe.
However, some countries may have laws or regulations that require the screening of patent applications for national security issues before they are filed with the EPO. This somewhat vague assertion is given context by the fact that there are 38 member states to the European patent Convention; these are: Albania; Austria; Belgium; Bulgaria; Croatia; Cyprus; Czech Republic; Denmark; Estonia; Finland; France; Germany; Greece; Hungary; Iceland; Ireland; Italy; Latvia; Liechtenstein; Lithuania; Luxembourg; North Macedonia; Malta; Monaco; Netherlands; Norway; Poland; Portugal; Romania; San Marino; Serbia; Slovakia; Slovenia; Spain; Sweden; Switzerland; Turkey; United Kingdom. It is, therefore, necessary to consider the nationality of the representative, or release the jurisdiction from which the representative is operating along with the nationality of the various inventors.
As is therefore evident, that can be great complexity. If it is possible when filing a patent at the European Patent Office in a category that may be affected by national security requirements, it is normally advisable to file in a local jurisdiction and allow that jurisdiction to effectively screen the application. Not least since any approval by the European Patent Office is of little or no value as defence regarding misfiling of subject matter.
To enable some useful guidance, it is perhaps most beneficial to look at some major jurisdictions and consider the requirements (note that the summary herein is truncated and not should not be taken as legal advice).
As mentioned above, it is the responsibility of the applicant, and specifically also of the representative, not to foreign file subject matter which may be national security sensitive.
To help this determination be carried out, the UK IPO (the UK patent office) publishes a list of technologies which are sensitive. This is a useful screening tool. However, apparently, some of the technologies are so sensitive that the titles are not even provided, and the list is redacted! Nevertheless, from numbers of years of experience, the delegation of responsibility to the applicant/representative is helpful. Therefore, one of the services we provide is to review applications and to provide an indication/assurance that foreign filing is likely to be permissible. Where we have doubts, then we can access a priority service for the clearance. This usually has a turnaround of one or two days (this cannot be guaranteed) and provides a written response as to whether the subject matter is likely to be national security sensitive and therefore must be filed only in the United Kingdom. As may be expected with this question, we take the approach that if in doubt, you should check.
In France, the National Defense Secrecy Commission (Commission du secret de la défense nationale, CSDN) is responsible for examining patent applications that could have national security implications. The CSDN is part of the Ministry of Defense and reviews patent applications to determine if the invention in question is related to defence, national security, or other sensitive areas. If the CSDN determines that the invention has implications for national security, it may recommend that the patent application be denied, or that certain information be removed from the public record. When this arises, we would advise using a specific French national patent attorney.
In Germany, the Federal Office for Economic Affairs and Export Control (Bundesamt für Wirtschaft und Ausfuhrkontrolle, BAFA) is responsible for examining patent applications that could have national security implications. The BAFA is part of the Federal Ministry for Economic Affairs and Energy and reviews patent applications to determine if the invention in question is related to defence, national security, or other sensitive areas. If the BAFA determines that the invention has implications for national security, it may recommend that the patent application be denied or that certain information be removed from the public record. When this arises, we would advise using a specific German national patent attorney.
Summary for Europe
National security requirements regarding patent filings are jurisdiction specific and it is highly recommended that initial filing should be in a local jurisdiction to avoid the risk of mis- filing. Naturally, the issue arises regarding multiple inventors from different jurisdictions and this is usually resolved, to the extent that it can be resolved, by first determining whether there is any realistic issue of national security. Most patents have nothing realistically to do with national security matters and so the issue is we might say, “technical” in nature and not a significant burden. Where there is a potential issue, then the usual approach is to make a patent filing in the most onerous jurisdiction after obtaining clearance in the more flexible, or at least most responsive, jurisdictions.
As may be expected on this particular topic, caution should always be exercised and in doing this it is worth considering issues of second order. For example, if approaching an attorney in the United Kingdom to facilitate clearance, then differentiation should be made between a European patent attorney working in the United Kingdom and an attorney with certification actually in the United Kingdom for United Kingdom work (a chartered patent attorney). It would also be reasonable to use an attorney with known experience in defence matters who is a national of the jurisdiction and, for example in the United Kingdom is a signatory to the Official Secrets Act. This article therefore can best be thought of as providing the correct questions to ask when faced with the issue of national security requirements, rather than providing answers to those questions.
Overriding International Issues
As can be seen, the requirements are national-based and complex, however, there are some overarching treaties, and given current international affairs and the extensive use of certain munitions, the reader should be aware of the Convention on the Prohibition of the Use, Stockpiling, Production and Transfer of Anti-Personnel Mines and on Their Destruction, also known as the Ottawa Convention. It was adopted in 1997 and entered into force in 1999.
This international treaty prohibits the patenting of landmines. As part of the Ottawa Convention, signatory countries are required to take steps to prevent the patenting of any technology related to anti-personnel mines. Caution is advised since what constitutes a mine and what constitutes anti-personnel is likely context dependent and this subject as a whole is probably best left to attorneys working within government agencies.
To date, 164 countries have joined the Ottawa Convention, indicating a widespread international consensus against the use of anti-personnel mines. Hence, whilst at the time of writing, it is understood that the United States and China, among others, are not signatories, a significant number of other countries, including India, are.
Thus, when dealing with joint inventorship and foreign filing, practitioners must take into account multiple considerations. We suggest seeking local counsel in all of the jurisdictions where inventors reside or are citizens, or where the invention was conceived, to ensure all local laws are complied with. There still remain many open questions, such as what are the implications when there are joint inventors located in multiple countries with conflicting rules, such as China, India, and the U.S.? Perhaps filing in all jurisdictions on the same day may be the safest way to proceed. However, there are not currently clear-cut answers to all potential scenarios.
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