License to File

By: Josh Sloat

Foreign Filing License Risks and Strategies

Foreign filing licenses – surprisingly sneaky and easy to overlook, but can come with significant consequences if you do. Many countries, including the US, require inventors to receive special permission to file with patent offices outside of the inventor’s – or invention’s – country. A foreign filing license is a government issued document that represents this permission for inventors and companies to file in foreign countries. Failing to receive this permission can come with serious ramifications including fines, patent revocation, and even imprisonment!

Why so serious? Well, like with most matters of foreign export compliance, it comes down to each nation’s strong desire to protect its own security and economic interests. Allowing ideas to cross borders comes with the risk of the unauthorized exportation of technologies and sensitive information that could have implications for military applications, national security, and state secrets. 
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In this month’s episode, we're bringing you along for a tale of international mystery and intrigue and into the clandestine world of foreign filing licenses. Ty Davis, Patent Strategy Associate at Aurora, along with our all star patent panel, discusses:

• The three main categories of filing license requirements
• Strategies for data collection and how to navigate potential conflicts
• And some example walkthroughs of international filing conflicts and their resolutions

Ty is joined by our always exceptional group of IP experts, including:

• Ashley Sloat, President and Director of Patent Strategy at Aurora
• Kristen Hansen, Patent Strategist at Aurora
• David Jackrel, President of Jackrel Consulting

Availability

​Patently Strategic is available on all major podcasting directories, including Apple Podcasts, Spotify, and Google Podcasts. We're also available on 12 other directories including Stitcher, iHeart Radio, and TuneIn, so you should be able to find us wherever you listen to podcasts.

Topic and guest participant requests

​If you’re an agent or attorney and would like to be part of the discussion or an inventor with a topic you’d like to hear discussed, please reach out.​

Resources

​Foreign Filing License Countries Table
As mentioned in the episode, based on our research, we've assembled a table of known countries with foreign filing license requirements. This table also breaks down the categories discussed in this episode, including whether the requirements are based on location of inventive activity vs. location/residency/citizenship of participants and whether or not the requirements are limited to national security, state secrets, and/or military applications. This is available as a downloadable PDF.

Related Reading​
The following articles talk about how international filing fits into your overall patent timeline and strategy. 

• From Filing to Issuance: A Patent Prosecution Timeline
• Patents at the Speed of Sound: How to Fast Track Your Patent

Transcripts​
We're also providing computer-generated transcripts for improved accessibility and additional reference opportunities. 

Slides
For the visual learners out there, we also like to make our presenter slides available for your reference.