No Foreign Filing License? Go to Jail! Episode 92

The Scenario: Filing a Patent in Another Country Without a License

Here’s the situation: You’re an inventor in the United States. You have an invention that you came up with in the United States, but you don’t think it would sell well here—it would only sell well in Mexico. So you find a Mexican patent attorney and ask her to file a Mexican patent application for you. Can you do it?

Actually, no. It is illegal to do that, and you can be fined up to $10,000 and imprisoned for up to 2 years—or both. Sounds really harsh, right? You’re only allowed to file in foreign countries if you have a foreign filing license. The good news is that it’s super easy to get one.

Why does the U.S. government even care if you file in another country? Basically, they don’t want any technology created or thought of in the U.S. to be exported to other countries in case there’s some kind of national security issue.

How to Get a Foreign Filing License

So how do you get a foreign filing license? The easiest way is to file either a provisional or non-provisional patent application, and then wait for your official filing receipt. The receipt will say, “Foreign filing license granted.” As long as your invention isn’t some kind of nuclear weapon, military arms application, or other implement of war, then you should get the license.

If for some reason you don’t receive an explicit foreign filing license, but six months have passed and you haven’t explicitly received something saying you’re not allowed to file abroad—what’s known as a secrecy order—then you’re allowed to foreign file.

So yes, in theory, you can get a $10,000 fine and 2 years in jail, but my guess is that this kind of severe punishment would be reserved for people knowingly exporting nuclear weapon technology to North Korea or something like that. I can’t imagine two prisoners talking and one says, “What are you in for?” “Murder. You?” “I filed a patent application in Canada for a baby pacifier without getting permission from the U.S. Patent Office.”

What If You Don’t Want to File in the U.S. at All?

But what if you don’t want to file in the U.S. at all? Does that mean you have to file in the U.S. just to get a foreign filing license?

No, because there’s another way. You can fax a request for a foreign filing license along with a copy of what you intend to file in the foreign country. The Patent Office should review it in a few days and then issue you a foreign filing license.

What If You File Without a License?

Now, if you forget and file anyway, you can petition for a retroactive license. You’ll need to disclose the countries you applied in, explain that you made a mistake, and pay a fee. Then, you should receive a retroactive license and be fine.

Uncommon Scenarios and the PCT

I would say it’s pretty rare that a U.S. applicant wouldn’t file in the U.S. first, but it might happen—just be aware of what you need to do beforehand.

Another common scenario is when someone wants to file a PCT (Patent Cooperation Treaty) application. If you remember from my PCT episodes, you can file a PCT application in lots of countries. If you’re in the U.S., you usually have the choice of filing with the U.S. receiving office or the International Bureau in Switzerland. Just be aware that unless you filed a provisional patent application and got a foreign filing license, you should probably file in the U.S. receiving office—because filing in the International Bureau is considered a foreign export.

Foreign Inventors Filing in the U.S.

The next question might be the opposite: There are lots of people in foreign countries who don’t care about getting a patent in their own country—they want a patent in the United States. Are they allowed to file in the U.S.?

Yes and no. Legally, they can file in the U.S., and the USPTO will grant a patent no matter where you’re from. But the real question is whether the country they’re from has a rule like the U.S., where you’re not allowed to foreign file without a license from your own country. Maybe they could be fined or imprisoned if they file in the U.S. without such a license. It really depends on the specific country and its rules.

For example, in China, you have to receive clearance to file in other countries. In Russia, you have to file an application in Russia before filing abroad. In Indonesia, there are no such restrictions.

There’s a table on the WIPO (World Intellectual Property Organization) website that lists all the countries with rules about what inventors are allowed to do in terms of foreign filing. Just search for “WIPO foreign filing requirements.”

Joint Inventors in Different Countries

You can also get into tricky situations where, say, one inventor is in Russia and one is in the U.S., or in any other joint inventor scenario involving different countries. You should really consult a patent attorney if you’re in a complex situation—or any situation where inventors are trying to file in a country other than their own. Sometimes it’s very simple and permissible, but other times it might not be allowed.

I’m Adam Diament, and until next time, keep on inventing.