Among the many considerations facing foreign patent applicants, it is particularly important to examine national patent laws. Some foreign countries limit the filing of patent applications abroad before a national patent application filing or authorization occurs. Thus, a foreign applicant who files a provisional application in the U.S. may satisfy the requirements of the Paris Convention, EPC Article 87, dictating priority rights, but may still run afoul of security provisions in their home country.
Foreign Filing Laws
The majority of industrialized countries that have enacted security provisions focus restrictions on the export of technology posing a potential threat to national security. The United Kingdom and Germany represent two chief EU member states requiring prior authorization for defense technology
Similarly, South Korea requires security clearance for inventions that are related to defense technology.
In some countries, like China, nearly all inventions require a foreign filing license. Recent changes to Chinese patent laws, including changes to Rules 8 and 9, require entities and individuals wishing to file a patent application based on an invention or utility model “completed” in China to first seek approval from the State Intellectual Property Office (SIPO) via a “secrecy” examination procedure.Other countries with similar licensing requirements include India, Malaysia, Singapore, and New Zealand.
There are also a number of countries with security provisions that require all patent applications to be filed nationally first. These countries do not typically grant foreign filing licenses. For example, Portugal requires applicants with corporate offices or residence in Portugal to first file with the national office unless priority is claimed to a prior national application. Countries with similar provisions include France and the Russian Federation, although these provisions are often ill-enforced.
Application of some “national-first” filing laws are complicated by divergent judicial interpretation. The relevant laws of the U.S., for example, apply only to inventions “made in this country.” Similar language appears in the patent laws of Russia and China. In determining the locus of invention, each of these countries generally consider the site of facilities and labor, the place of invention conception, and the location of scientists with background knowledge indispensable to the invention.
The relevant U.K. law, by contrast, applies to any “person resident” in the country and applies broadly to any invention made by a U.K. resident anywhere in the world. The “person resident” language also appears in the patent laws of India, Malaysia, Singapore, South Korea, New Zealand and France.
Indeed, foreign inventors must be sure to comply with the protective patent law provisions of their home country before submitting a provisional or non-provisional application in the United States. For more information regarding international foreign filing restrictions and the advantages of filing provisional patents in the United States, consider a recent publication by Dan Cislo and Michael Anderson in the Santa Clara computer and High Technology Law Journal, Why International Inventors Might Want to Consider Filing Their First Patent Application at the United States Patent Office & the Convergence of Patent Harmonization and E-Commerce, 30 SANTA CLARA HIGH TECH. L.J. 555 (2014), available at: