Inventions made in the USA must be filed first with the USPTO unless a petition for foreign filing license is granted
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).
What if an invention made in the US will be first filed in a foreign country?
An applicant must file a petition under 37 CFR § 5.13 when there is no corresponding patent application in the US. Only after the foreign filing license is granted may the applicant file a US invention first in a foreign country.
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.
What should foreign inventors for US patents do if the invention was not made in USA?
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.
Patent foreign filing license and restrictions on inventions made in foreign countries (outside US)
Foreign inventors and applicants must be careful if they seek to file their first patent application on an invention in the US. Local laws of each country may restrict inventions developed in those countries from being applied for first in another country. Some countries want the first patent application on an invention developed in their territory to be filed first with their patent office.
If you are inventor or applicant based outside the US and you wish to file the first patent application on a non-US invention with the USPTO, take a look at WIPO’s list of countries with foreign filing restrictions and links to relevant laws.
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