Foreign Filing Licenses

Commonly, a foreign parent company makes patent protection decisions for its subsidiary companies.  Therefore, the US subsidiary informs the foreign parent about any inventions on which a patent application might be filed.  Thus, the US subsidiary might casually transfer its technology to its parent in a foreign country.

Such a casual transfer can violate US export law.  Specifically, the US regulates the transfer of both products and technology from the US to other countries.  Thus, it is possible that informing the parent company of the invention violates US law.  The penalties for such a violation can be severe.

US attorneys sometimes market services based on this issue.  Specifically, they market a service of export opinion letters, which can be quite expensive.  The opinion letters also are not necessarily reliable, because they ultimately are an attorney’s opinion, not a definitive pronouncement.

For the limited situation discussed above, a more reliable option is available, as long as the foreign parent will consider filing a patent application in a non-US jurisdiction (e.g., the foreign parent company’s home country).

The USPTO is empowered to authorize the transfer of technology for the narrow purpose of considering the filing of a patent application in a non-US jurisdiction.  The USPTO grants this authorization via a foreign filing license, as described in MPEP 140.

“[E]very U.S. origin application filed in the USPTO is considered to include an implicit petition for a foreign filing license,” although foreign filing licenses are available via other means, as well.  MPEP 140.  Importantly, this guideline extends to a provisional patent application. 

There are limits to the foreign filing license, just as there are limits on an export opinion letter.  For example, for a foreign filing license, “[t]he grant of a license is not immediate or even ensured.”  Id.  In addition, the license might be relatively narrow (under 37 CFR 5.15(b)), rather than a relatively broad license (under 37 CFR .515(a)).  And if the license is obtained by filing a provisional patent application, the provisional filing might create issues in foreign jurisdictions (e.g., in Europe).

Nevertheless, in many situations, filing a provisional patent application is a good solution for many foreign parent companies.  The provisional patent application offers an official view of the technology export, rather than an attorney’s view.  In many situations, it is less expensive to file a basic provisional patent application (e.g., a “cover sheet” provisional patent application) than to obtain an export opinion letter.  Further, an opinion letter provides no rights to the company: even if the USPTO does not grant the foreign filing license, filing the provisional patent application still gains the company the benefit of a priority date.

Therefore, if Modal PLLC can assist you in determining whether a provisional patent application is appropriate for your situation, please contact us.

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