Intellectual Property Law

Chapter 21 Putting It Into Words Solution

Draft a brief paragraph to a client explaining why he cannot file a patent application in
China before he files an application for the invention in the United States.

Under U.S. law, in the case of inventions made in the United States, it is
necessary to obtain a license from the Director of the U.S. Patent and
Trademark Office (USPTO) before applying for a patent in a foreign
country. This license, called a foreign filing license, is required if the foreign
application is to be filed before an application is filed in the United Sates or
before the expiration of six months from the filing date of an application in
the United States. This six-month period allows the USPTO to review
applications that might affect matters of national security (and order the
applications kept secret, if such is the case). We strongly recommend that you
file your application in the United States first because the filing of the
application in the USPTO is deemed to constitute a request for a foreign
filing license. When you receive the filing receipt for your application, the
USPTO will indicate if the license is granted. If so, you may then file your
application in China. If you fail to receive a foreign filing license before filing
an application in a foreign country, any corresponding U.S. application or
patent is invalid. In addition, fines and criminal sanctions may be imposed
for violations of the license rules. Thus, it is critical that you receive a foreign
filing license before filing a patent application in China.