Foreign Filing Licenses When Inventors Are Abroad
I've previously written about reducing risks when preparing patent applications abroad. What happens when inventors are located abroad? Such occurrences are happening increasingly frequently as research and development (R&D) transcends national boundaries. Many multinational corporations (or even just U.S. corporations with overseas R&D facilities) have teams that span two or more countries. When an invention was invented by inventors in multiple countries, employers need to be even more cautious about where and when to file patent applications.
In most cases, the law in each country needs to be considered. For example, India can impose stiff penalties (including fines and jail time) if a patent application is first filed in any country other than India when even one of the inventors was an Indian resident when the invention was made. It matters not if the other five inventors are American. The Indian law specifically says "resident." A U.S. citizen who is on temporary assignment to India and has lived and worked there for more than 6 months could be a resident. Unlike similar laws in some other countries, the law does not specify the content of patent applications that is subject to this restriction. However, my experience is that like other countries, India is concerned about the export of military and other sensitive technology. An alternative to filing a patent application in India (and waiting six weeks before filing the application in other countries) would be to request a foreign filing license, which is typically granted in a month or less.
Many other countries have requirements that vary slightly, including China, France, Russia, the UK, and others. It is generally best to seek the advice of patent attorneys in each of those countries (or an attorney experienced in both jurisdictions) before blindly filing an application in the U.S. or elsewhere when inventors are resident in different countries.
