Inventions made in the USA must be filed first with the USPTO

A patent application for an invention made in the U.S. must first be filed with the USPTO under 35 USC § 184. Permission from the US government must be granted before an applicant can seek to patent the invention in foreign countries. That written permission is called a Foreign Filing License which is typically found in the Filing Receipt issued by the USPTO after a patent application has been filed.

What matters is the country of invention (where the invention was created), and not the citizenship of the inventors as far as the U.S. is concerned. Foreign countries may have their own patent laws regarding the first-filing of any inventions made in their country.

What is a Foreign Filing License?

The applicant of a U.S. invention must first obtain a Foreign Filing License from the USPTO, which is routinely granted, before filing in other countries. If the invention is not subject to a secrecy order under 37 CFR 5.2 and at least six months have passed since the filing date of the first-filed US application, then a foreign filing license would not be required for the foreign application (MPEP Section 140).

PCT Application as First-Filed Application

If an applicant of a U.S. invention wants to file a PCT application first, then the PCT application must be filed with the USPTO (as opposed to a non-US Receiving Office).

Outsourcing the Drafting of U.S. Patent Applications

A foreign filing license from the USPTO does not authorize outsourcing to a foreign firm the drafting of a patent application for a U.S. invention. Exporting technical information abroad for the purposes of drafting a patent application will fall under the jurisdiction of the Bureau of Industry and Security (BIS) at the Department of Commerce which follows the Export Administration Regulations.

Inventions Made in China or Abroad

Countries outside the US typically have their own foreign filing licenses and rules regarding when an invention made in their country can be applied for patent protection abroad.

Inventions Made in China

For inventions developed in China, China’s patent laws require approval before any patent applications may be filed outside of China. To obtain permission to patent outside China, a patent application or a request for a confidentiality examination may be filed with China’s Patent Office, known as SIPO (State Intellectual Property Office of the People’s Republic of China). A PCT application filed with SIPO as the Receiving Office will be considered as a simultaneous request for a confidentiality examination.

Inventions Made in Foreign Countries (non-US countries)

WIPO provides a list of countries with foreign filing restrictions and links to relevant laws.

The following two tabs change content below.
Vic Lin

Vic Lin

Startup Patent Attorney | IP Lead Partner at Innovation Capital Law Group
If you are a startup or small business, we want to help. Our mission is to equip entrepreneurs with solid IP rights that facilitate funding, growth and sales. Let's get to work! Direct: 949.223.9623 | Email: vlin@icaplaw.com
Vic Lin

Latest posts by Vic Lin (see all)