Foreign filing licenses - considerations for Australian patent attorneys

Takeaway points

A foreign ﬁling license represents permission from one country for the ﬁrst ﬁling of a patent application to be in a different country. Different countries may use different terminology for such a licence (such as “written authority” or “security clearance”).
While Australia does not have foreign ﬁling license requirements, many countries do, and failure to obtain a foreign ﬁling license when one is required can result in serious repercussions including but not limited to an inability to obtain valid patent rights in an affected country, a ﬁne and imprisonment.
It may be necessary to carefully consider and possibly seek a foreign ﬁling license before an Australian provisional patent application is ﬁled if the answer to one or more of the following questions is yes:
- Are one or more inventors or applicants a national or a resident outside of Australia?
- Was the invention at least partially “made” outside of Australia?
- Does the invention concern any subject matter that could be regarded to relate to a state secret (eg applications which may be of interest to national defence or security)?

Background

While Australia does not have foreign ﬁling license requirements, many countries do. In situations where research is performed in multiple jurisdictions, or in situations where inventors have ties to countries outside of Australia, for example, failure to consider foreign ﬁling license requirements before ﬁling a provisional patent application can have serious repercussions.

It is possible that a foreign ﬁling license may be needed even in circumstances where all research for an invention has been performed in Australia.

It may be necessary to obtain a foreign ﬁling license to ﬁle a patent application, if for example:

a patent applicant or an inventor is a national of a country outside of Australia
a patent applicant or an inventor is a resident of a country outside of Australia (note that some jurisdictions can deﬁne “resident” broadly)
a patent application could be considered to contain national secrets and/or
the invention which is the subject of a patent application was at least partially made in a country outside of Australia

The consequences of not ﬁrst obtaining a foreign ﬁling license before ﬁling a patent application may vary from country to country, and in some circumstances, it may be possible to obtain a foreign ﬁling license retroactively.

We recommend that patent applicants keep an accurate record of the persons involved in an invention and consider whether a foreign ﬁling license may be needed before a provisional patent application is ﬁled.

Below we have outlined foreign ﬁling license requirements in many jurisdictions in which our ﬁrm operates and also in the US. It is also worth noting that the World Intellectual Property Organization maintains a list of countries that may require foreign ﬁling licenses.^[1]

There are no foreign ﬁling license requirements in Australia, New Zealand, Bangladesh, Indonesia, Mongolia, Nepal, Philippines, South Korea, Sri Lanka, Thailand and Vietnam.

There are foreign ﬁling license requirements in the following countries:

Pursuant to 35 United States Code 184, except when authorized by a license obtained from the US Commissioner of Patents, a person shall not ﬁle or cause or authorize to be ﬁled in any foreign country prior to 6 months after ﬁling in the US an application for patent in respect of an invention made in the US. Failure to obtain a US foreign ﬁling license when one is needed can present a bar to obtaining a US patent to the invention (35 USC 185).

It is possible to petition for grant of a US foreign ﬁling license retroactively in certain circumstances under 35 USC 184, although as at 1 June 2022, only 42% of such petitions were granted in the previous 12 months._^[2]

China

According to Art 20 of the Patent Law of China 1984, any applicant or individual that intends to apply for a patent in a foreign country for an invention or utility model accomplished in China shall submit the matter to the patent administration department under the State Council for conﬁdentiality examination.

The request for conﬁdentiality examination can be ﬁled as a separate procedure or in relation to a ﬁrst patent ﬁling in China. If the ﬁrst patent ﬁling is a Chinese Patent Cooperation Treaty application, a Chinese translation of the speciﬁcation would not be required at the time of ﬁling — the English text may be ﬁled ﬁrst.

It is to be noted that Art 20 applies to any applicant/individual who makes an invention within China and it is not based on nationality. Failure to request for conﬁdentiality examination may result in an invalid Chinese patent based on the same invention.

Singapore

According to s 34 of the Singapore Patents Act 1994, no person resident in Singapore shall, without written authority granted by the Singapore Registrar, ﬁle or cause a patent application to be ﬁled outside Singapore unless a patent application for the same invention has been ﬁled at the Singapore Registry not less than 2 months before the application outside Singapore.

Importantly, contravention of s 34 is a criminal offence and shall result in liability for a ﬁne not exceeding SGD 5000 or imprisonment for a term not exceeding 2 years, or both.

A “person resident in Singapore” is deﬁned in s 34 as including:

…[A] person who, at the material time, is residing in Singapore by virtue of a valid pass lawfully issued to the person under the Immigration Act 1959 to enter and remain in Singapore for any purpose [emphasis added].

The “person” referred to in s 34 includes both inventors residing in Singapore and applicants who are Singapore-registered companies. This means that written authority must be obtained even if all inventors reside outside of Singapore but the patent application is to be ﬁled in the name of a Singapore-registered entity.

In view of the serious repercussions for omitting to obtain written authority, our ﬁrm takes a cautious approach and construes the phrase “material time” as referring to any time from the conception of the invention to the actual ﬁling of the patent application.

Malaysia

According to s 23A of the Malaysian Patents Act 1983, no person who is a resident shall, without written authority granted by the Malaysia Registrar, ﬁle or cause to be ﬁled outside Malaysia an application for a patent for an invention unless a patent application for the same invention has been ﬁled at the Malaysian Patent Office not less than 2 months before the application outside Malaysia.

Contravention of s 23A is an offence and an offender is liable on conviction to a ﬁne not exceeding MYR 15,000 or to imprisonment for a term not exceeding 2 years or to both.

The term “resident” in s 23A includes both inventors residing in Malaysia and applicants who are Malaysian-registered companies. This means that written authority must be obtained even if all inventors reside outside of Malaysia, but the patent application is to be ﬁled in the name of a Malaysian-registered entity.

It is to be noted that a Power of Attorney executed by the applicant is required for ﬁling the request for written authority (simply signed, notarisation/legalisation not required).

Brunei Darussalam

According to s 33 of the Brunei Patents Act 2011, no person resident in Brunei Darussalam shall, without written authority granted by the Registrar, ﬁle or cause a patent application to be ﬁled outside Brunei Darussalam unless a patent application for the same invention has been ﬁled at the Brunei Patent Office not less than 2 months before the application outside Brunei Darussalam.

Contravention of s 33 is a criminal offence and shall result in liability for a ﬁne not exceeding BND 5000 or imprisonment for a term not exceeding 2 years, or both.

A “person resident in Brunei Darussalam” is deﬁned in s 33 as including:

…[A] person who, at the material time, is residing in Brunei Darussalam by virtue of a valid pass lawfully issued to [the person] under the Immigration Act (Chapter 17) to enter and remain in Brunei Darussalam for any purpose [emphasis added].

The “person” referred to in s 33 includes both inventors residing in Brunei Darussalam and applicants who are Brunei Darussalam-registered companies. This means that written authority must be obtained even if all inventors reside outside of Brunei Darussalam, but the patent application is to be ﬁled in the name of a Brunei Darussalam-registered entity.

India

According to s 39 of the Indian Patents Act 1970, no person resident in India shall, except under the authority of a written permit sought in the manner prescribed and granted by or on behalf of the Controller, make or cause to be made any application outside India for the grant of a patent for an invention unless an application for a patent for the same invention has been made in India, not less than 6 weeks before the application outside India. Section 39 speciﬁcally states that this section does not apply in relation to an invention for which an application for protection has ﬁrst been ﬁled in a country outside India by a person resident outside India.

Contravention of s 39 is an offence and an offender is punishable with imprisonment for a term which may extend to 2 years, or with ﬁne, or with both. Additionally, s 40 of the Indian Patents Act states that contravention of s 39 will result in the abandonment of a patent application ﬁled from that invention, and any patent granted shall be liable to be revoked.

Pakistan

According to s 26 of the Pakistan Patents Ordinance 2000, no person resident in Pakistan shall, without written authority granted by the Controller, ﬁle or cause to be ﬁled outside Pakistan an application for the grant of a patent for an invention unless an application for patent for the same invention has been ﬁled in the Patent Office not less than 6 weeks before the application outside Pakistan. Section 26 speciﬁcally states that this section does not apply in relation to an invention for which an application for protection has ﬁrst been ﬁled in a country outside Pakistan by a person resident outside Pakistan.

Contravention of s 26 is an offence and an offender is punishable with imprisonment for a term which may extend to 2 years, or with ﬁne not exceeding INR 20,000, or with both.

Conclusion

The repercussions of failing to secure a foreign ﬁling license when one is required can be severe. It is best to always consider the possibility of foreign ﬁling licenses before a provisional patent application is ﬁled.

This article is intended only to provide a summary of aspects of the subject matter included. It is not intended to be and should not be treated as comprehensive. It does not constitute legal or professional advice and should not be relied upon as a substitute for legal or other professional advice to make any particular decision. The law of intellectual property is constantly evolving. Whilst reasonable efforts have been made to state the position as at July 2022, the likelihood of changes to the relevant law and practices should always be considered.

This article was first published in the Intellectual Property Law Bulletin 35.6&7, September 2022.

[1] World Intellectual Property Organization, International applications and national security considerations, accessed 26 July 2022, www.wipo.int/pct/en/texts/nat_sec.html.

[2] United States Patent and Trademark Office, Retroactive foreign ﬁling licenses petitions, accessed 26 July 2022, www.uspto.gov/patents/apply/petitions/timeline/retroactive-foreign-ﬁlinglicenses-petitions.

Foreign filing licenses – considerations for Australian patent attorneys

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