fbpx

Retroactive Foreign Filing Licences

/ Bill McFarlane / Articles

Does your company employ US residents, and do those employees or contractors sometimes invent while they are living or working in the United States? Then take note.

Did you know that any United States (US) Patent naming that person as an inventor may be liable to be invalidated – just because a Foreign Filing Licence had not been obtained from the US Patent and Trademark Office (USPTO) prior to filing in another country?

Whether you were aware of the regulations or not, the USPTO administratively examines every US patent provisional and non-provisional (complete) application to determine if the subject matter is of importance to the security of the US.  The details in the patent application could include anything from a method of making a deadly virus, the method of providing unbreakable digital security or the parts and method to make a nuclear explosive.

If someone were to apply for a patent for such methods or devices, the US Government would want to know sooner rather than later. And it’s more than just a concern for the US Government; most countries have a patent application vetting process. If the idea in a patent requires classification as a secret (so it does not become published), it is within the powers provided by the respective patents Act  to prohibit the publication of that patent and prevent the grant of a patent until the patent subject matter is no longer considered a secret. (Refer to an earlier article I wrote on this subject here)

For that reason and others, the USPTO reviews every patent application filed in the US. In most cases, the patent application will proceed into the USPTO system and will have a licence to do so. If you look carefully at the patent filing receipt which is issued by the USPTO, you will note the explicit mention of a Filing Licence. Without even touching on the US resident issue or discussing inventions ‘made’ in the US, you can already see that all patent applications create much more activity than many people would have ever thought necessary.

Why you must file with the USPTO

 The US Government has declared it essential for an American resident (or anyone located in the US) inventing while in the US, to file for a licence before they have filed for their invention overseas (a non-US application). Note that this only applies if the US resident or other person was in the US when they conceived and put the invention into practice, which is not just the making of a prototype but potentially includes the drafting of information that ends up in the patent specification assuming the invention has not been reduced to practice.

How does that affect Australian companies?

You might be wondering how that affects a company based in Australia, and what that might mean for you. In Australia, it is common to file an Australian provisional patent application and within 12 months file a PCT application, which within 30 months of the provisional filing enters into the US as a national phase patent application. The US foreign filing licence law also affects Australian companies if they file by other patent filing routes, and subsequently file a US patent application.

If there is no foreign filing licence and one of the inventors is a US resident and they invented (or made the invention) while in the US, there must be an application to the USPTO for what is termed in this case a Retroactive Foreign Filing License under 37 CFR § 5.25.  This retroactive license empowers the USPTO to authorise those patent applications which were inadvertently filed overseas before the US application was filed. This is assuming you did not know you had a duty to request the Foreign Filing Licence before you filed the Australian provisional.

 US residents who invent and what that means for your business

As mentioned, it is not uncommon for a patent application in the US to eventually become granted, naming that US resident who invented while in the US as an inventor (and it does not matter what level of inventorship was involved). If there is no Foreign Filing License issued by the USPTO, the Granted patent will be declared invalid as soon as the patent is challenged. No ifs, No buts – INVALID.

Another critical point is that the US law relates to the concept of an invention ‘made’ in the US. This means that anyone who is in the US and invents, automatically triggers the need to obtain a Foreign Filing Licence or a Retroactive Foreign Filing Licence.

Foreign inventors studying or working in the US

A resident of another country attending a university in the US is a great example of how the Foreign Filing License laws play out. Although they arenot a US resident, any invention conceived or developed in the US will need a Foreign Filing Licence, and they’ll need it before they file in their own country.

Another scenario of concern is when an Australian resident visiting the US to work temporarily conceives or develops the invention while in the US and then returns to Australia. Any intention to file for a patent for the invention ‘made’ in the US will trigger the need to obtain a Foreign Filing Licence, again technically before filing in their country of choice.

 What should you do if you already have a US patent pending or Granted?

To deal with the US resident issue:

Consult with your inventor/s and find out if they are a US resident and whether they were living or working in the US when the invention was created or prototyped. If so, check with your attorney to determine if a Foreign Filing Licence exists for that invention’s patent.

To deal with the non-US resident issue:

Consult with your staff and find out which country they were in when they conceived and brought into practice or created a prototype of the idea that has become the subject of a patent (in any country, but more importantly the US). If ‘made’ in the US, then check with your attorney to determine if a Foreign Filing Licence exists for that invention’s patent.

If you are just venturing into the patent realm and you are employing, or plan to employ a US resident, or your firm contracts a US resident to invent who also happens to be working in the US for you, then keep this sobering issue in mind. If any of your staff are intending to travel to the US and intend to invent while there, you also need to ensure this is a consideration. If your patent attorney does not raise the issue, you need to.

If a foreign filing licence is not in place and it should be, you need to act quickly. You must present your case with complete honesty and candour to the USPTO to seek and obtain a Retroactive Foreign Filing Licence – that step may save your patent and your job.