I have spent a couple of hours trying to figure out where I need to file a patent application, and I still don’t have a good answer. The scenario is pretty simple, and an effect of globalization. My US company client has a patent application that has five inventors. The inventors include on American national, a Chinese national, a German national, a Swedish national, and a Turkish national. I have been tasked with figuring out where we can file, to maintain the ability to file elsewhere internationally, and minimize the possibility of penalties.
The US has the most restrictive foreign filing license requirement. It requires that any invention made by a US national, or for a US national, be filed initially in the US or in the PCT with the US as the search authority. Alternatively, a foreign filing license could be obtained, without filing in the US. Failing to follow this rule will result in loss of patent rights, and can result in significant penalties including fines and potentially jail time.
China requires an initial filing in China, for any invention conceived or completed in China, or receiving a foreign filing license. However, that license may take up to four months to issue. The penalty for failing to do so, is loss of Chinese patent rights. Of course if state secrets are disclosed, more severe penalties may be imposed. But that is not a real risk in this case.
Germany requires a foreign filing license for any invention with a German inventor that has a secrecy aspect. Getting that license may take up to four months. The penalty is focused on disclosure of state secrets, and for that it is severe. It is unclear whether there are any penalties if you fail to seek a foreign filing license, but no state secrets are disclosed. At least one source said that these requirements only apply to national security related applications.
Sweden appears not to have any restrictions, at least in my review of their patent law. If you have any input on it, let me know.
Turkey appears to have no restrictions, at least in my review of their patent law. If you have any input, let me know.
This kind of project is only going to become more common, as global corporations have inventors in various countries, working together. If anyone knows of a good source that explains these laws, I would very much appreciate knowing about it. Otherwise, I’m just going to keep adding to my little spreadsheet, as I encounter inventors from various countries.
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As an update, Germany due to the Inventors’ Rights Law, requires that a patent be initially filed in Germany or in the EP or PCT, designating Germany. While that requirement does not come out of a foreign filing license context, it is important in making such decisions.
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