Where Do I Begin – Restrictions to Priority Filings based on Nationality and Residency

03.09.2018

Certain countries have rules applying to Applicants and Inventors regarding where to file the first Patent Application for an invention owned, invented and/or developed within that country. The main reason is to give governments a chance to assess Applications for sensitive technology, in particular for inventions the publication of which may compromise national security.

Israeli companies are fairly familiar with Section 98 of Israeli Patent Law, restricting Israeli residents from submitting Patent Applications outside of Israel pertaining to weaponry or military matters prior to receiving security clearance by the Minister of Defence. However what is less known to Israeli companies, is that Priority Applications in certain cases may be restricted to the country of origin of foreign Inventors or for inventions co-owned by foreign entities, regardless of the subject matter of the invention. In today’s age of global commerce, this may apply to many scenarios such as collaboration with international companies, outsourced Research and Development centers, or contribution of foreign Inventors participating, for example, in an academic student exchange program.

Under the local practice of the countries in question – inventions made by a native citizen or resident, may not be filed abroad without obtaining a Foreign Filing License or having filed first in the respective country acting as the Office of First Filing. Following are common examples:

USA: Section 184 of the US Patent Law stipulates that a Patent Application must first be filed in the USA if the invention has been created on US soil, irrespective of the residency or nationality of Applicant or Inventor. Only after a Foreign Filing License is issued can the invention be filed abroad.

Russia: Russian Patent Law likewise stipulates that a Patent Application must first be filed in Russia if the invention has been created on Russian soil, irrespective of the residency or nationality of Applicant or Inventor. Once the Russian Patent Office establishes that the Application does not contain state secret information it will issue a notification to that extent, which may be regarded as a Foreign Filing License.

India: According to Section 39 of the Indian Patents Act, no person resident in India shall file an Application outside India for the grant of a Patent for an invention prior to either: (1) obtaining a Foreign Filing License; or (2) first file a Patent Application in India and wait six weeks prior to proceeding with international filing. For Indian citizens who spend significant time abroad, the critical time period for determining residential status is the time of filing the Application. While the term “resident” is not defined by the Indian Patent Act and is open to interpretation, common practice is to adapt the term residency as defined by the Indian Income Tax Act and/or Foreign Exchange Maintenance Act.

China: According to Article 20 of the Chinese Patent Law, in order to obtain a Foreign Filing License for an invention or utility model developed partially or fully in China, it is required to file a  request for Confidentiality Examination with the Chinese Patent Office, before filing abroad. Translation of the invention into Chinese will be required at that stage.

UK: A Patent Application for an invention made by a UK resident, and which raises issues of national security or public safety, must either be filed at the UK Patent Office or a foreign filing license has to be obtained. International (PCT) applications or European applications filed by UK residents are habitually filed via the UK Patent Office to allow for security inspection prior to sending on to the relevant International authorities.

Failure to abide by these restrictions may severely prejudice the interests of an Applicant or Patentee as well as attract criminal liabilities such as administrative fines and/or imprisonment. In particular, conflicting requirements may be encountered when an Israeli citizen is simultaneously a resident in a foreign jurisdiction, or when an invention is made by an international team.  It is therefore crucial to be aware of this matter during the initial stages of obtaining Patent protection and, when in doubt, consult with your IP Attorneys to determine the correct filing strategy.

Co-authors:
Ms. Mirela Bratosin – Paralegal, Foreign Filling Department
Adv. Yissachar Bertisch – Manager, Foreign Filing Department & Deputy Chief Paralegal

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