Foreign Filing Requirements in the United States

By: Yuanfeng Gao, Shyam Pandula and Christian A. Camarce

This article discusses foreign filing requirements in the United States. Assuming the United States is the country of invention, the following questions are explored: (1) who needs to seek permission to file a patent application outside the United States?; (2) what is required to file a patent application outside the United States?; and (3) if any, what remedies are available if permission is not initially sought to file a patent application outside the United States?

1. Who needs to seek permission to file a patent application outside the United States?

Any applicant who files for a patent application for an invention made in the United States must first seek permission from the U.S. Patent and Trademark Office prior to filing the patent application outside the United States. According to 37 C.F.R. § 5.11, a foreign filing license is required before filing any application for patent in a foreign country, foreign patent office, foreign patent agency, or any international agency, if the invention was made in the United States, and: (1) an application on the invention was filed in the United States less than six months prior to the date on which the foreign application is to be filed; or (2) no application on the invention has been filed in the United States.

2. What is required to file a patent application outside the United States?

There are two ways in which an applicant can file its patent application outside the United States: (1) file a U.S. patent application and wait six months prior to filing the patent application outside the United States; or (2) file a petition for expedited foreign filing license under 37 C.F.R. § 5.12.

According to 35 U.S.C. § 184, “except when authorized by a license obtained from the Commissioner of Patents a person shall not file or cause or authorize to be filed in any foreign country prior to six months after filing in the United States an application for patent or for the registration of a utility model, industrial design, or model in respect of an invention made in this country.” Filing a patent application in the United States is considered to include a petition for license under 35 U.S.C. § 184 for the subject matter of the application. Six months after filing the U.S. patent application, a foreign filing license on that subject matter is no longer needed, provided no secrecy order has been issued by the U.S. government.

Under 37 C.F.R. § 5.12, an expedited foreign filing license within six months of filing a U.S. patent application can be requested by an applicant. A petition for the expedited foreign filing license must include the U.S. patent application number, filing date, inventor information, and title, along with a fee. Alternatively, an expedited foreign filing license can be obtained without filing a U.S. patent application. In this instance, a legible copy of the material upon which the foreign filing license is requested must be included. Generally, within three business days from receipt of the expedited petition, a foreign filing license will be granted if there is no national security concern.

3. If any, what remedies are available if permission is not initially sought to file a patent application outside the United States?

Filing a patent application outside the United States without first obtaining a foreign filing license may result in a loss of U.S. patent rights. However, to remedy the noncompliance, an applicant can submit a petition for retroactive foreign filing license provided the applicant can show that the unlicensed foreign filing occurred through error. According to 37 C.F.R. § 5.25, a petition for retroactive foreign filing license includes: (1) a listing of each of the foreign countries in which the unlicensed patent application material was filed, (2) the dates on which the material was filed in each country, (3) a verified statement (oath or declaration) containing: (i) an averment that the subject matter in question was not under a secrecy order at the time it was filed aboard, and that it is not currently under a secrecy order, (ii) a showing that the license has been diligently sought after discovery of the proscribed foreign filing, and (iii) an explanation of why the material was filed abroad through error without the required license first having been obtained.

Considerations for Patent Applicants

Applicants should carefully consider their patent filing strategies for any inventions made in the United States to preserve their patent rights. For example, the time frame in which applicants seek to file their patent applications outside the United States may guide whether a petition for an expedited foreign filing license should be filed. And, if applicants err in failing to appropriately petition for a foreign filing license, applicants may petition for a retroactive foreign filing license to remedy the error.

This article appeared in the July 2019 issue of Global Patent Prosecution newsletter.