Australian companies engaged in research and development increasingly collaborate with overseas inventors as part of global R&D programs. China and India, in particular, are key partners for Australian businesses developing advanced technologies in sectors such as mining, energy, medical devices and advanced manufacturing. Many of these collaborations result in patentable inventions.
What is often overlooked, however, is that collaborating with inventors located in other countries, can trigger mandatory foreign filing licence requirements before a first patent application is filed in Australia. Failure to address these requirements at the outset can have serious and irreversible consequences for patent rights.
Australia Has No Foreign Filing Licence Requirement – But Your Collaborators Do
Australian patent law does not impose a foreign filing licence requirement. An Australian company can generally file its first patent application anywhere in the world without government approval (although there are exceptions when it comes to national security related technologies).
Many countries, however, take a quite different approach, requiring either that the patent application be first filed in that country, or that a Foreign Filing Licence be obtained from the relevant authority in that country.
The World Intellectual Property Organisation (WIPO) has published a list[1] of such counties which include, notably, the United States (another significant collaboration partner), China and India. Madderns has published an article[2] focussing on the foreign filing licence requirements of the United States.
China and India both impose pre‑filing approval requirements designed to protect national security and sensitive technologies. These rules can apply even where the applicant is an Australian company and even where the first patent application is intended to be filed in Australia.
Collaborations with Chinese Inventors
Under Chinese patent law, if the substantive technical content of an invention is developed in China, a confidentiality examination (commonly referred to as a foreign filing licence) must be obtained from the China National Intellectual Property Administration (CNIPA) before filing a patent application outside China.
Critically, the nationality or residence of the applicant is irrelevant. If China‑based inventors contributed to developing the invention in China, an Australian‑first filing without prior Chinese clearance can permanently bar patent protection in China.
In practical terms, this means that an Australian company collaborating with engineers or researchers working in China must assess whether a Chinese foreign filing licence is required before filing an Australian provisional or complete patent application.
Collaborations with Indian Inventors
India imposes an even broader rule. Under Section 39 of the Indian Patents Act, any person resident in India must obtain prior permission from the Indian Patent Office before filing a first patent application outside India.
This requirement is based on residency, not nationality or location. An Indian engineer working for an Australian company may still be considered resident in India for patent law purposes, even if they spend time overseas. If a resident Indian inventor is named on the application, an Australian‑first filing without an Indian foreign filing licence can result in criminal penalties and loss of Indian patent rights.
Why This Matters for Australian Businesses
Foreign filing licence issues are not mere procedural technicalities. Non‑compliance can lead to:
- permanent loss of patent rights in China or India;
- invalidation of later‑filed patents in those countries; and
- regulatory or criminal consequences for inventors.
Because these rules apply before the first filing anywhere in the world, the risk often arises at the Australian provisional stage—long before international filings are contemplated.
Obtaining a foreign filing licence in these countries can take up to 6 weeks (although can be less than a week), and require at least a rough draft of the patent specification intended to be filed in Australia, and so it is important to plan this process early, particularly if there is a hard filing deadline (for example imminent disclosure).
Practical Takeaway
Australian companies should treat foreign filing licences as a front‑end patent strategy issue, not a downstream formality. Before filing a first patent application in Australia, companies should always ask:
- Where was the invention developed?
- Where are the inventors resident?
- Are any inventors located in China or India?
Early identification of these issues, combined with timely foreign filing licence applications where required, can prevent costly mistakes and preserve global patent rights.
Madderns is experienced in identifying the need for, and obtaining, Foreign Filig Licences. If you think that your activities might trigger the requirements, feel free to reach out to a Madderns attorney for assistance.
1. WIPO list of countries requiring a foreign filing licence – https://www.wipo.int/en/web/pct-system/texts/nat_sec
2. Madderns article on US foreign filing licence requirements – https://madderns.com.au/retroactive-foreign-filing-licences/
