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Exporting Patent Rights: Trends in Foreign Inventors Patenting in the US

With the quick advancement of technology and the ease of contact among parties located all over the world, our world has shrunk significantly from even a decade ago. Collaborations in research and product development, as well as partnerships and other co-development opportunities, are growing beyond national borders.

Patents have a positive impact on competition by facilitating market access and business formation. They may also be a necessary prerequisite for entrepreneurs to get money from venture capitalists, as evidenced by the ability of tiny businesses to exercise their rights in front of larger corporations. Furthermore, patents may help spread technology (also known as technology transfer or dissemination of technology).

Companies in the technology industry work on products that they may or may not release in the future. What matters more to them is obtaining patents for their inventions so that they are protected in the event that they decide to launch a new product. Patents can be used to track rates of technical change or progress, as well as to monitor the state of research and development. Where certain patents are related to firms, they can occasionally be used as a barometer for gauging a company's current or future interests. However, one must remember patent is a territorial right and to secure it one must file a patent in the respective jurisdictions in which they seek protection.

In the excitement of filing a patent application to protect an invention, practitioners and patent applicants frequently overlook the timing, or even the necessity, of completing a critical part of the patent application filing process: obtaining a foreign filing license.

What is a foreign filing license?

A foreign filing license allows an applicant to seek patent protection in a country other than the inventor's or invention's country with permission from the patent office of that country. There are now known filing limits in 29 of the Patent Cooperation Treaty (PCT) contracting states, according to the World Intellectual Property Organization (WIPO). The policy reasons for requiring a foreign filing license are usually to prevent the exportation of national security-sensitive information. For example, due to limited or no market potential in India, the invention being considered a non-patentable subject matter in India, and the presence of R&D teams working together in more than one country, the applicant may first file the patent application in a foreign country. In such instances, the applicant or inventors may need a Foreign Filing License (FFL) from the Indian Patent Office.

As stated by WIPO: “In most cases, you are considered to have permission to file with another [patent office] if either you have filed an application for the same invention at the relevant national [patent office] a certain amount of time previously (which varies from [patent office] to [patent office]) and have not received a security notice stating that you should not file elsewhere, or if you have explicitly requested and been granted permission.”

However, the particular requirements for international filing licenses differ per country and may even clash. For example, one country's laws may require a foreign filing license if the application contains an inventor who is a resident of that country, whereas another country's laws may only require a foreign filing license if the invention was made in that country, regardless of the inventor's residency or citizenship status.

Compliance with these various laws can add difficulties to managing patent application writing and filing procedures, especially as global partnerships grow. The location of the invention, as well as the inventor's citizenship and nationality, are sometimes included in the conditions for a foreign filing license. Noncompliance can result in the invalidation of any resulting patents, as well as fines and, in certain situations, imprisonment.

Let's get to the most basic question: can a foreigner or a non-resident/non-citizen obtain a US patent?

The answer is a yes!

Let us look at some foreign patent laws in the US

The patent laws of the United States do not discriminate based on the inventor's citizenship. Any inventor, regardless of citizenship, is eligible to apply for a patent in the same way as a U.S. citizen is. However, if you are an applicant from another nation, there are a few requirements that must be met (that is foreign to the United States).

The requirement for a foreign filing license in the United States is based on the location of the inventive activity, independent of the inventor's nationality. A foreign filing license can be granted retroactively if the application was filed abroad "by error and the application does not disclose an invention within the scope of section 181," that is, the application does not contain subject matter that could jeopardise national security. If an applicant fails to get a foreign filing license for an invention made in the United States, the applicant will be unable to seek a patent in the United States for that invention.