Patent Filing Gotchas

Posted by Natalie Sulimani

September 22, 2009

NON-RESIDENTS OF THE UNITED STATES FILING IN THE UNITED STATES
&
FOREIGN FILERS: NOT A RESIDENT OF THE UNITED STATES?

by Ken Kozik

Anyone in any country may file for a patent in the United States of America. The United States places no importance on citizenship or residency for inventors desiring a patent.

HOME COUNTRY LAWS

A number of countries require that any resident who invents something in that country but wants to file a patent application in another country, first obtain permission from the country of residence. The United States is one such country and others may include, for example:

1. Germany (Section 52 of the German Patent Act)
2. France (Articles L. 614-18 and 614-20 of the French Patent Law)
3. United Kingdom
4. New Zealand (Section 25(5) of the New Zealand Patent Act): must first file the application in New Zealand and wait six weeks, or obtain a foreign filing license before a foreign filing
5. Peoples Republic of China (Article 20 of the Chinese Patent Law, Article 398 of the Chinese Criminal Law, and Rule 8 of the implementing regulations)
6. Canada: applicable to Canadian Government employees only
7. South Korea: if the invention is defense related: the South Korea Patent Office has a process to respond to inquiries about whether or not an invention is defense related (Article 41 of the Korean Patent Act, Act No. 950).

Currently, there does not appear to be any foreign filing license requirement in the following countries.

1. Mexico
2. Japan
3. Taiwan
4. Indonesia
5. Australia

As a practical matter, it is most prudent to check on the requirements of the country of citizenship of that inventor in addition to the country of residence, should they be different.

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The above list of countries is not authoritative and all non-U.S. residents should first check with their host country’s patent office on the need for a foreign filing license. An email to the applicable patent office would be a prudent precaution and establish a written record.
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