Jeff Bernard Jeffrey Bernard is a patent attorney with Suiter Swantz IP. Jeff graduated with honors from Virginia Tech, receiving his B.S. in Biology with a minor in Chemistry. Jeff received his Juris Doctor from Albany Law School.

In patent law, the Paris Convention provides a right of priority for utility inventions and industrial designs.  Under the Convention, a valid first filing in one member country establishes an effective filing date for later filings in other member countries.

Thus, assuming timely filing and a proper priority claim (12 months for utility inventions and 6 months for industrial designs), later filings are treated as if they had been filed on the same day as the first filing.

Some member countries have restrictions on where the first filing can occur, and those that do tend to be commercially significant markets in terms of R&D, manufacturing and commercial activity.  Therefore, it is important to comply with these requirements to prevent loss of patent rights, and in some cases, even harsher penalties.

First filing requirements are based on different factors, such as where the inventive activity occurred, the subject matter of the invention, and the inventorship.  Inventive activity concerns the country of origin of the technical solution determined by the patent application claims.  In other words, where the claimed invention was developed, in whole or part.  Subject matter restrictions, which are similar across the member countries, are in place to provide protection for sensitive technical information such as state secrets, military technology, national security and atomic energy.  Inventorship concerns the residency and citizenship of the inventors.

The permission that must be sought to file a domestic invention abroad is referred to as a Foreign Filing License (FFL).  Assuming a domestic invention is first filed domestically, the issuance of a foreign filing license occurs automatically and well in advance of the priority deadline, and typically in a matter of weeks.  In most cases, the FFL is granted or acquiesced to unless the invention is directed to sensitive technical information as discussed above.

While most Convention members have foreign filing requirements to a degree, some have strict requirements and severe consequences for failure to comply.  The requirements of a few of the more significant markets are discussed below.

China is generally considered to have the strictest FFL requirements.  According to Article 20, no patent right shall be granted in China for an invention developed in China and filed abroad without permission.  In other words, failure to obtain advance approval to foreign file for domestic inventions, regardless of residency and citizenship, will result in loss of patent rights in China.  In addition, should the subject matter relate to security or other vital state interests, criminal penalties and fines may result for the Applicant.  Permission is obtained by filing a Request for Confidentiality Examination, either with or without a domestic filing.  With a domestic filing, the Request is automatic, and the foreign application can typically be filed within a month, and in some cases a matter of days, assuming the application does not need to be kept confidential.   Without a domestic filing, the Request must include a description of the technical solution in the Chinese language.  As a practical matter, the description should be identical to the contents of the patent application intended to be first filed foreign.  While the timing for approval can take up to 6 months, typical approval time is in the range of 1-2 months.  In the absence of approval within 6 months, the Applicant can assume permission has been granted and can file abroad without consequences.

India FFL requirements are based on residency of the inventor OR Applicant.  According to Section 39 of the India Patents Act, an FFL is required before fling outside of India when any named inventor/Applicant is a resident in India.  When a domestic application is the first filing, assuming no confidentiality protection has been invoked, a foreign filing can be made after 6 weeks.  Section 39 does not apply to persons not residing in India but does apply when even one of the inventors/Applicants is an Indian resident.  Residency is determined according to the Indian Tax Code, which provides some room for interpretation.  Failure to comply with the FFL requirements may result in the Indian patent application being rejected entirely.

United States also bases foreign filing requirements on domestic inventive activity but provides forgiveness for failure to comply, in some cases.  Assuming the invention is not ordered to be kept secret for the reasons discussed above, obtaining an FFL requires a petition under 37 CFR § 5.13 along with the requisite petition fee and a copy of the material upon which the license is desired.  The request can be expedited.  In the event the application if first filed foreign without an FFL, the FFL can be applied for and granted retroactively if the first foreign filing was by error and without deceptive intent.

Considering failure to comply with the FFL requirements can have severe consequences in some member countries, it is important before first filing to determine (1) where the inventive activity occurred (2) the contributions of the inventors to the claims, and (3) the inventor information.  In some situations, inventive activity may have occurred in more than one country, and an application may name inventors from more than one country, and in some cases both.  In these situations, it should be determined where best to obtain a license and where best to file first to prevent loss of rights.


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