Before filing a provisional patent application, it is important to consider whether or not one or more foreign filing licenses should be obtained. If a foreign filing license is needed and is not obtained, then that may provide a bar to later obtaining patent rights in certain countries.

It may be necessary to first seek the permission of a relevant country (i.e. obtain a foreign filing license in that country) to file a patent application, if for example:

  • A patent application is to be filed by a national of the relevant country;
  • A patent application is to be filed by a resident of the relevant country;
  • 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 the relevant country.

For Australian organisations, situations that particularly require careful consideration include where one or more of the inventors or applicants on the application are nationals (citizens) or residents outside of Australia, or the invention was at least partially made outside of Australia. This is particularly important where the invention is the result of collaboration with persons from abroad, or the inventors themselves are nationals or residents of countries besides Australia.

Questions to particularly consider before filing a provisional patent application include:

  1. Are one or more inventors or applicants a national or a resident outside of Australia?
  2. Was the invention at least partially ‘made’ outside of Australia?
  3. Does the invention concern any subject matter that could be regarded to relate to a state secret (e.g. applications which may be of interest to national defence or security)?

The consequences of not first obtaining a foreign filing license before filing a patent application may vary from country to country. However, for some countries if a foreign license was not obtained before a patent application was filed, this may create a bar to later obtaining patent rights for the invention in that country. In some circumstances it may be possible to obtain a foreign filing license retroactively.

We recommend that 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 – this should be discussed with your patent attorney.

The World Intellectual Property Organization maintains a list of countries that may require foreign filing licenses here. However, further information on specific countries follow:

Australia

No foreign filing license requirement.

New Zealand

No foreign filing license requirement.

United States

Pursuant to 35 U.S.C. 184, except when authorized by a license obtained from the U.S. Commissioner of Patents a person shall not file or cause or authorize to be filed in any foreign country prior to six months after filing in the United States an application for patent in respect of an invention made in the USA.

China

According to Chinese Patent Law, if a person makes part of an invention in China, then the person must file a request for “Confidentiality Examination” at the Chinese Patent Office before filing an application for a patent or utility model abroad. Such a request can be filed as a separate procedure or in relation to a first patent filing in China. Filing a PCT application in China first, one can use an English language text. For the purposes of the “Confidentiality Examination” requirement the Chinese Patent Law does not consider an inventor’s citizenship or residency. Therefore, any person who makes an invention within China must fulfil this requirement if they intend to file a patent or utility model application outside of China otherwise any Chinese patent based on the same invention may be invalid.