Globalisation and improvements in communication technology mean that it is now common for corporations, universities and research institutions to collaborate on research across the globe.
Accordingly, situations occur in which inventions are being made in multiple jurisdictions by inventors with multiple and/or different nationalities or countries of residence. In many countries, there are national security requirements that an invention be filed in the country of residence or nationality of the applicant/inventor before it is filed elsewhere.
Overview of the law: national security provisions
The patent laws of many countries contain security provisions that either (i) require the filing of a patent application in that country before the filing of a patent application in another country, or (ii) require the applicant to obtain a foreign filing licence (if possible) prior to filing in another country. These provisions aim to ensure that technology that could harm national security is not exported without first being reviewed.
A country may fall into one of three categories:
- countries with no security provisions
- countries with security provisions which only relate to defence related technology, and
- countries with security provisions which apply irrespective of subject matter.
Whenever an invention results from an international collaboration, there is the potential to fall foul of one or more of these security provisions.
Countries with no security provisions
A number of countries do not contain any national security provisions of this type.
As such, in these countries there are no restrictions that prevent inventions either made in that country or by residents and nationals of that country from being initially filed in another jurisdiction without first obtaining a foreign filing licence.
Although this list is not exhaustive, countries of this type include Argentina, Australia, Austria, Brazil, Hong Kong, Indonesia, Ireland, Japan, Liechtenstein, Mexico, Monaco, New Zealand, Philippines, Poland, South Africa, Sri Lanka, Switzerland, Taiwan, Thailand and Venezuela.
Collaborations with residents or nationals of any of these countries in developing patentable subject matter should not cause any difficulty from a national security sense.
Countries with security provisions which only relate to defence-related technology
In many countries, security provisions are limited and only apply to inventions that are considered to be in the areas of defence or areas where the publication of the technology would be prejudicial to the national interest.
In the United Kingdom, there is a requirement for first filing in the United Kingdom for applications by residents.1 This requirement applies to any application that either relates to military technology or is such that its publication would be deemed prejudicial to national security. Unfortunately, the Patents Act provides little guidance as to what constitutes an invention that would fall foul of this provision.
Security provisions that restrict defence-related technology or technology the publication of which may be seen as being prejudicial to the national interest apply in the patent laws of Belgium, Bulgaria, Czech Republic, Denmark2, Finland3, Germany4, Israel5, Korea6, Luxembourg, Sweden7 and Turkey.
Countries with security provisions which apply irrespective of technology
There are a number of countries that apply restrictions on applicants irrespective of technology.
In China, it is stipulated that in relation to any invention made in China, the applicant must obtain security clearance with the patent administration department prior to filing in a foreign country.8 Failure to comply with this requirement can lead to the Chinese Patent Office (SIPO) refusing to grant a patent for the corresponding Chinese application. This is similar to the USA, whereby the applicant for an invention made in the USA must obtain a foreign filing licence before filing in a foreign country unless the application was filed first in the USA and a period of six months has expired.9 As with China, failure to comply with this requirement may lead to invalidity of the corresponding US patent, unless the failure to procure the licence was through error and without deceptive intent.10
Countries that apply restrictions irrespective of the technology include Armenia, Belarus, Cyprus, Kazakhstan, Spain, France, Greece, India, Italy, Malaysia, Portugal, Russian Federation, Singapore and Vietnam.
Methods used to determine whether the security provision applies
If there is inconsistency as to how each country determines whether provisions apply, the security provisions can be divided into three groups:
- countries in which the provision applies based on the nationality of the applicant, inventor or beneficial owner;
- countries in which the provision applies based on the residency of the applicant, inventor or beneficial owner; and
- countries in which the provision applies based on the jurisdiction in which the invention was made.
In some countries, such as Spain and Greece, the provisions apply to nationals of those countries irrespective of where the invention is made. In other countries, the provision applies to residents of the country. Countries that impose a residency requirement include Belgium, Bulgaria, Denmark, Finland, UK, India, Malaysia, Portugal, Singapore, Turkey and Vietnam.
Finally, in certain jurisdictions the security provision will only apply if the invention was made in that country. This is the case in Armenia, Cyprus, Russian Federation and the USA.
What can I do if the security provisions apply to my invention?
In many of the countries that have security provisions, it is possible to obtain a foreign filing licence should the need arise.
Unfortunately, there are a number of countries with security provisions that do not make allowances for the provision of a foreign filing licence. Russian Patent Law states that where an invention is developed in Russia, the patent application should be first filed in Russia.11 There is no mechanism for obtaining a foreign filing licence without first filing in Russia, and so where at least a part of an invention is made in Russia, then the Russian patent office must be the office of first filing.
Dealing with the issues in a practical way
As previously discussed, the need to obtain a foreign filing licence for any particular invention will depend upon either (1) the location(s) in which the invention took place, or (2) the residency (and possibly nationality) of the inventors, applicants or beneficial owners, or both.
Whenever you are conducting collaborative research across multiple jurisdictions, the locations of the research facilities as well as the nationalities and residence of the applicants and inventors should be assessed to determine if any action is required.
Security laws vary widely from jurisdiction to jurisdiction, are constantly changing, and the penal provisions for non-compliance range from loss of protection in the jurisdiction to significant criminal sanctions for the inventor or applicant.