Inventions made in the USA must be filed first with the USPTO unless a petition for foreign filing license is granted
Except when permission 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 a made-in-the-USA invention in foreign countries. That written permission is called a Foreign Filing License (FFL). The FFL is routinely found in the Filing Receipt issued by the USPTO after a US patent application has been filed.
The country where the invention was created is what matters, and not the citizenship of the inventors. For example, a foreign filing license would be required if a China citizen made or contributed to an invention while living in the US. 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 US-made invention must first obtain a Foreign Filing License from the USPTO before filing in other countries. In most cases, the FFL is granted without question. The FFL is required in the following situations:
- The applicant wishes to file the first patent application for the invention in a foreign country; or
- The applicant filed the first patent application in the US, but wants to
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 for Foreign Filing License under 37 CFR § 5.13 when there is no corresponding patent application in the US. After the Foreign Filing License is granted, the applicant may then file the first patent application for a US invention in a foreign country.
How do you file a petition for a Foreign Filing License?
A petition for Foreign Filing License to be filed with the USPTO must include:
- the petition fee ($100 for small entity as of the date of this post);
- a petition in letter form including the petitioner’s address and full instructions for delivery of the requested license when it is to be delivered to other than the petitioner; and
- a legible copy of the material, such as invention disclosure, for which the foreign filing license is requested.
What if an invention was made by joint inventors living in the US and in foreign countries?
The patent laws of each country where an inventor resides must be obeyed. For an invention jointly made by an inventor in the US and an inventor in the foreign country, the patent laws of the foreign country must also be complied with in addition to US patent law.
For example, suppose a foreign country requires that a patent application for an invention made in their country must first be filed with the foreign country, and you have a situation involving US and foreign inventors. One option may be to file a petition for a Foreign Filing License from the US government. Once the US grants the FFL, then the applicant may file the first patent application in the 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 may 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.
Need to file a petition for Foreign Filing License?
Contact US patent attorney Vic Lin by email at vlin@icaplaw.com or call (949) 223-9623 to explore how we can obtain a foreign filing license to enable you to file your first patent application outside the US.
