Before filing a patent application in a foreign country, inventors and companies with U.S.-based inventions must consider foreign filing license requirements and export control laws. Failing to obtain a required foreign filing license before filing abroad can result in significant legal consequences, including abandonment of the patent application and potential criminal liability. At PerspireIP, we ensure that our clients comply with these important but often overlooked requirements. This guide explains what you need to know about foreign filing licenses and export controls in the patent context.
What Is a Foreign Filing License?
A foreign filing license is permission granted by the USPTO to file a patent application outside the United States before a U.S. patent application has been pending for 6 months. Under 35 U.S.C. 184, any person who makes an invention in the United States must obtain a license from the USPTO before filing a patent application in a foreign country. The purpose of this requirement is to allow the U.S. government to review inventions made in the U.S. and impose a secrecy order if the invention is related to national security before it is disclosed to foreign patent offices.
When Is a Foreign Filing License Required?
A foreign filing license is required whenever you want to file a patent application for a U.S.-made invention in a foreign country within 6 months of the U.S. filing date. This most commonly arises in the context of PCT applications and direct foreign national filings made within the 12-month Paris Convention priority period. The key trigger is where the invention was made — if it was made in the U.S. (or by U.S. nationals in some cases), a license may be required before foreign filing.
How to Obtain a Foreign Filing License
There are two ways to obtain a foreign filing license. First, you can automatically receive a foreign filing license as part of filing a U.S. patent application. When you file a U.S. application (including a provisional), the USPTO reviews the application for national security concerns. If no secrecy order is imposed within 6 months of the U.S. filing date, you automatically have permission to file abroad. Most routine commercial inventions receive this automatic clearance without any action required.
Second, you can petition for a foreign filing license before filing the U.S. application. This is appropriate when you want to file abroad before filing in the U.S., or when you want to file abroad within 6 months of the U.S. filing date without waiting for the automatic 6-month clearance. The petition for a foreign filing license is filed with the USPTO using a specific form, and the USPTO typically grants or denies the petition within 5 business days for routine commercial inventions. The foreign filing license is then included on the filing receipt for the U.S. application.
Consequences of Filing Without a Foreign Filing License
The consequences of filing abroad without a required foreign filing license can be severe. Under 35 U.S.C. 185, any patent obtained in the U.S. on an invention filed abroad without a license is invalid and unenforceable. In addition, the unlicensed foreign filing can result in criminal penalties for the inventor or company. While these criminal penalties are rarely prosecuted for inadvertent violations, the invalidity of the resulting U.S. patent is a real and significant risk that can completely undermine your patent portfolio.
Export Controls and Patent Applications
Beyond the USPTO’s foreign filing license requirement, inventors and companies must also consider U.S. export control laws when filing patent applications internationally. The Export Administration Regulations (EAR) administered by the Department of Commerce’s Bureau of Industry and Security (BIS) and the International Traffic in Arms Regulations (ITAR) administered by the State Department both regulate the transfer of controlled technology to foreign persons and countries — including transfers that occur when a patent application is filed with a foreign patent office or made available to foreign patent agents.
- ITAR applies to defense articles and services listed on the U.S. Munitions List. If your invention is an ITAR-controlled item, filing a patent application abroad or sharing the invention disclosure with foreign patent agents requires a State Department license or applicable exemption.
- EAR applies to dual-use items on the Commerce Control List. Filing a patent application containing controlled technical data with a foreign patent office may require a BIS license or the use of an applicable license exception.
- Many technology areas implicated by patent applications — including encryption, certain biotechnology, advanced materials, and satellite technology — may be subject to export control review before international filing.
Practical Compliance Steps
The following practical steps help ensure compliance with foreign filing license and export control requirements before filing patent applications internationally.
- Always file a U.S. application first and wait 6 months for the automatic foreign filing license before filing abroad.
- If you need to file abroad within 6 months of the U.S. filing, petition for a foreign filing license simultaneously with or before filing the U.S. application.
- Review your invention disclosure for export control applicability, particularly if your invention involves military, aerospace, encryption, or dual-use technology.
- Consult with an attorney experienced in both patent law and export controls if there is any question about whether your technology is subject to export control regulations.
- Document your compliance efforts — maintain records showing that you obtained the required foreign filing license and considered export control requirements before any international filing.
Special Considerations for Companies with Foreign Employees or Facilities
Companies with multinational workforces or research facilities must consider where inventions are made for purposes of the foreign filing license requirement. If an invention is made jointly by U.S. and foreign employees, or if the inventive work occurs in multiple countries, determining where the invention was made requires a factual analysis of where the key inventive steps occurred. PerspireIP can help companies develop internal policies for tracking the location of inventive activity and ensuring appropriate foreign filing license compliance across their global operations.
How PerspireIP Helps with Foreign Filing License Compliance
PerspireIP builds foreign filing license compliance into our standard international patent prosecution workflow. We routinely check filing dates, petition for foreign filing licenses when needed, evaluate export control applicability for client technologies, and coordinate with export control counsel when necessary. Our goal is to ensure that our clients can pursue international patent protection confidently and compliantly.
Conclusion
Foreign filing license requirements and export control laws are critical compliance considerations for any inventor or company seeking international patent protection. Overlooking these requirements can result in invalid patents and serious legal exposure. PerspireIP integrates these compliance checks into our international patent prosecution process to ensure our clients never face these risks. Contact us today to discuss your international patent filing strategy and ensure full compliance with all applicable requirements.