Patenting inventions developed by multinational teams

About the authors

Parminder Lally is a senior associate at Appleyard Lees IP LLP. Parminder specialises in drafting and prosecuting patent applications for computer-implemented inventions. She has built a substantial reputation working with high-growth start-ups, spin-outs and SMEs in Cambridge, and has in-house experience.

Simon Ambroz is a trainee patent attorney. He primarily specialises in prosecuting and drafting patent applications for computer-implemented inventions and helping start-ups and SMEs to grow. 

 

After a year of working from home during the global pandemic, many companies have reconsidered their flexible working policies, and employees may now have more freedom to decide where they work.  This may extend beyond simply working from home some of the time to permitting employees to move to, and work in, another country entirely.  Even during the past year, people temporarily moved to be nearer to family abroad or to take advantage of better weather overseas.  But what are the implications for tech companies of having employees based anywhere?  In this article, we take a look at one possible issue.

Imagine this. You have a friend,  Mrs Py, who is a UK resident and an enthusiastic inventor. Recently, Mrs Py invented an electronic paralyser which can be fitted into a pen. This invention has the potential to revolutionize the secret agent industry. According to her research, the USA has a big appetite for this invention. Therefore, Mrs Py filed her first patent application in the US. Now, Mrs Py is facing a large fine and potential imprisonment because she first filed in the USA and not in the UK. Is this a fantasy nightmare scenario? Unfortunately, it is a legal possibility.

Why is our imaginary friend Mrs Py facing imaginary imprisonment right now? She ignored the foreign filing restrictions of the UK, which restrict the ability of a UK-based inventor to file their patent application outside of the UK.  The UK is not alone in having such restrictions.  In this article, we explain foreign filing restrictions and how they impact patent filing strategy, which will be of interest to anyone in a company that has multinational teams, anyone protecting the work coming out of a University, or a company that has offices or teams based in multiple countries.

The map below shows some countries which have foreign filing restrictions.  Hover over the countries to see what the restrictions are, and continue scrolling to find out more about the restrictions.

What are foreign filing restrictions?

As shown in the map above, in some (not all) countries, it is a legal requirement to file your patent application first at a particular national Patent Office.  That is, there is a restriction on whether you can file your patent application abroad / outside of that country, which depends on:

  1. whether the patent application is the first filing for that invention;
  2. the subject-matter of the application;
  3. the residency and/or nationality of inventors and/or applicants; and
  4. the geographical location of where the invention was made/devised.

Each of these conditions is further discussed in greater detail below.  The third and fourth issues are those which routinely come-up in and need to be taken into account when filing the patent application. 

Generally speaking, the consequences of not following the foreign filing restrictions are:

  • imprisonment; and/or
  • fine; and/or
  • the invalidity of the patent in that country.

Not abiding by the rules could mean you lose important patent protection in a key jurisdiction (e.g. the US or China), which can be a costly mistake for your business.

Thus, it is important to determine at an early stage who devised an invention, where they are based/resident, and their nationality.

1. First filing

The foreign filing restrictions usually apply to the first filing (i.e. first patent application of that subject-matter) only. Thus, for instance, filing a divisional application does not count as the “first filing” because the subject-matter has been disclosed in the parent application.

2. Subject-matter of your application

Foreign filing restrictions may only apply to a certain subject matter, or may apply regardless of the subject matter.   For example, in the US, Greece and China the restrictions apply to all types of inventions and technologies, while in the UK and Italy they apply only to technologies that are prejudicial to national security or public safety or relate to military technology.

3. Residency and/or nationality of inventors and/or applicants

This condition varies between countries and therefore, can be confusing. For instance, the filing restriction of the UK is based on residency and not nationality, whereas in Greece, the filing restriction is based on nationality irrespective of where the inventor resides. Therefore, for example, an invention made by a Greek inventor who is a permanent resident of Germany should be first filed in Greece.

Currently, more and more research teams are multinational and may even be spread out across the world.  The global pandemic may also mean that people are living and working in a different country to whether they were based prior to the pandemic. This means that you have to check and adhere to all foreign filing requirements of each nationality and/or residency of your inventors. This can get very complicated because more than one condition may apply.

Some countries apply both “nationality” and “residency” requirements, such as Israel, while other countries distinguish between the nationality/residency of inventors and applicants.   That is, in some countries, the nationality of the inventor may matter, while in others, the location of the applicant (which is usually the head office of a company) may be relevant.

4. The geographical location of where the invention was made

A prime example of this condition is the US. All inventions, irrespective of the subject-matter of the invention, irrespective of the nationality/residency of the inventor and applicant, have to be first filed in the USA if they were devised in the US. For instance, an invention which does not relate to national security, made by a German national/citizen working in the US who is an employee of a UK based company, has to be first filed in the US.

A closer look at the UK requirements

These are specified in sections 22 & 23 of the UK Patents Act 1977 (UKPA), which state that the first filing of a patent application by a UK resident should be with the UKIPO (UK Intellectual Property Office) if the application relates to technology that may be prejudicial to national security or public safety or relates to military technology. Returning to our imaginary friend Mrs Py, she was a UK resident and her technology is considered to relate to military technology. Therefore,  Mrs Py should have first filed her patent application in the UK not the US.

The list of technologies that are considered to relate to military technology or to be prejudicial to national security and public safety under s22 UKPA can be found here:

It is important to note that it is not just technologies that are clearly prejudicial to national security and public safety that fall within these provisions (such as nuclear weapons), but also, for example, software associated with detecting underwater sonar targets, certain alloys and catalysts, high accuracy gyroscopes, and even certain types of clothing.

The consequence of not adhering to the UK’s foreign filing restrictions is a fine of up to £5000 or imprisonment for up to two years.  

Determining the right filing strategy

In some cases, you may have no option but to first file your patent application outside of the UK, in order to satisfy the foreign filing restrictions.  This may be the case when there is no way to circumvent the restrictions, for example.  It may also be the case when you have inventors who are residents in or nationals of different countries that each have their own restrictions. 

In many cases, you may want to file your patent application in the UK first. There are a number of reasons for filing a first patent application for a UK applicant at the UK Intellectual Property Office (UK IPO). For example, it is generally cheaper to file a patent application that has been drafted by a UK patent attorney in English at the UK IPO than it is to file the patent application in a country that requires translation of the application.  Another reason may be the relative speed of obtaining feedback from the UK IPO.  Thus, in some cases, despite any foreign filing restrictions that apply, it may be desirable to file the first patent application in the UK. 

This may be possible in some cases by obtaining a foreign filing permit or license which allows you to file the patent application at the UK IPO first instead of in, for example, India or the US.  The foreign filing permit is issued by the country with the foreign filing restriction, and allows you to file your patent application outside of that country.  (N.B. Not all countries offer a foreign filing permit).  The process of applying for a permit is relatively straightforward.

To avoid getting into a situation where foreign filing restrictions have not been adhered to, we will ask you a series of questions when we work on a new patent application for, to help us ascertain where the invention was devised and by whom.  We will then devise a patent filing strategy which complies with any foreign filing restrictions and which suits your needs and budget.

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