Foreign Filing Licences: What are they, and why are they important?

This article continues our series on the steps to take once you have had a fantastic idea and, with your patent attorney, have decided to file a patent application. Here, we explore the importance of informing your patent attorney about who has contributed to the invention, the contributors’ residency and nationality, and where (i.e. in which country) the invention was made. Considering territorial requirements early in the drafting process is crucial, as we will explain below, even if the first application is filed without naming inventors, as often happens with a UK priority application.

Certain countries have provisions restricting where a patent application can be first filed if the inventors are residents or nationals from that country or where the work was carried out. For example, China requires a patent application to be first filed in China if the inventors reside there, similar for India. Greece, however, has similar requirements if the inventors are Greek nationals. Some countries require the application to be first filed in their country if the invention was made in that territory. In other countries, this territorial filing restriction is only a consideration for certain technologies that might have a security dimension.

In the UK, a foreign filing licence is only required for applications to be first filed outside the UK that contain information that might be prejudicial to national security or the safety of the public and which are filed or caused to be filed by someone resident in the UK. In the case of joint inventorship, sometimes the requirements of more than one country may need to be considered.

In a world becoming ever more connected and with the ability to work virtually increasing all the time, any company could be working with companies in other countries, such as contract research organisations (CROs), or may employ staff residents elsewhere. Companies considering patent filings must be aware, in general, of these restrictions, as noncompliance can have disastrous consequences.

For instance, in the US, if an invention was made in the US, a patent application for the invention should be first filed in the US unless a foreign filing licence is obtained. Noncompliance can lead to the corresponding US patent being invalid.

Countries with these territorial restrictions on where the first filing must be made usually allow an applicant to request permission to file in another country. You will need to provide sufficient information for the patent office to assess the invention and decide if they will grant approval to allow the filing in another country. This approval is referred to as a “foreign filing licence.” The timelines to obtain a foreign filing licence can differ from a few days to several weeks, depending on the country.

For UK companies, it may be preferable to file first in the UK rather than overseas, and therefore, it is important to tell your patent attorney early in the drafting process so the necessary information can be gathered and an informed decision can be taken as to where the patent application must be first filed or whether a foreign filing licence is required.

If you would like to discuss this with our Patent department, please contact Stratagem at mail@stratagemipm.co.uk.