Foreign Filing License

35 U.S.C. § 185 — Patent invalidity

A US patent is invalid if the invention was filed abroad in violation of the FFL requirement — unless the failure occurred through error and a retroactive license cures it. Opposing counsel in litigation and acquirors in diligence check FFL compliance for exactly this reason.

35 U.S.C. § 186 — Criminal penalties

Willful violations — particularly those involving secrecy-order subject matter — carry fines and potential imprisonment.

The cure — 37 C.F.R. § 5.25 retroactive license

Inadvertent violations can be cured by a retroactive license petition: list every unlicensed filing, verify the error, explain how it happened, and show diligence after discovery. Act promptly — delay after discovering the error weakens the petition.

35 U.S.C. § 184 — applies based on where the invention was made, not the inventor's citizenship. FFL granted on the filing receipt or by petition; 6-month rule applies.

Chinese Patent Law Art. 19 — any invention or utility model completed in China must undergo a confidentiality examination by CNIPA before being filed abroad. Violation: the Chinese patent for that invention can be denied/invalidated.

Indian Patents Act § 39 — a person resident in India must either file first in India (and wait 6 weeks) or obtain written permission from the Indian Patent Office before filing abroad. Violation can lead to abandonment of the Indian application and criminal penalties.

UK Patents Act § 23 — UK residents need clearance before foreign filing only if the application contains information relating to military technology or might be prejudicial to national security or public safety.

Several European countries require residents to file domestically first or obtain authorization, particularly for defense-relevant inventions. Multinational teams should check each inventor country's rules before choosing a first-filing office.

These countries generally do not restrict residents from filing first abroad, with narrow exceptions for classified or defense-related subject matter.

What is a foreign filing license and when do I need one?

A foreign filing license (FFL) is permission from the USPTO to file a patent application in a foreign country for an invention made in the United States. The requirement comes from 35 U.S.C. § 184: a person shall not file a patent application in a foreign country on an invention made in the United States unless (1) six months have passed since a US application was filed on the invention, or (2) a license from the USPTO Commissioner has been obtained. Key points: (1) The trigger is where the invention was MADE, not the inventor's citizenship or the company's location. An invention conceived and developed in a US lab by foreign-national employees still requires an FFL before foreign filing. Conversely, an invention made entirely abroad by a US company's foreign subsidiary generally does not require a US FFL (though the foreign country's own rules may apply). (2) In practice, the license is nearly automatic: when you file any US application (provisional, non-provisional, or PCT at the USPTO Receiving Office), the application is screened, and the official filing receipt typically states 'Foreign Filing License Granted' with a date. (3) The purpose is national security screening — the same review determines whether a secrecy order under 35 U.S.C. § 181 should be imposed (extremely rare, mostly defense technology). (4) Filing a PCT application at the USPTO as Receiving Office satisfies the US filing requirement, and the USPTO screens PCT applications the same way.

What happens if I file abroad without a foreign filing license?

The consequences are severe. Under 35 U.S.C. § 185, a US patent is invalid if the invention was filed abroad in violation of the foreign filing license requirement — the resulting US patent on that invention can be held invalid, unless the failure to procure the license 'was through error' and the patent does not disclose subject matter within the scope of a secrecy order. There are also potential criminal penalties: 35 U.S.C. § 186 provides for fines and imprisonment for willful violations, particularly where the unauthorized filing involves an invention under a secrecy order or harms national security. The error safe harbor and retroactive licenses: most violations are inadvertent — a multinational team files first at the EPO without realizing part of the invention was made in the US, or a foreign parent company files at home on US-made technology. The remedy is a petition for a retroactive foreign filing license under 35 U.S.C. § 184 and 37 C.F.R. § 5.25. The petition must include: a list of each unlicensed foreign filing with countries and filing dates; a verified statement that the unlicensed filing occurred through error; an explanation of how the error occurred; and a showing that the license is being sought diligently after discovery of the error. If granted, the retroactive license cures the § 185 invalidity problem. Practical advice: if you discover an unlicensed foreign filing, act promptly — diligence after discovery is an element of the petition, and delay weakens it.

Does the foreign filing license requirement depend on citizenship?

No — the US foreign filing license requirement under 35 U.S.C. § 184 is based on where the invention was made, not on the citizenship, nationality, or residence of the inventor or applicant. If the invention was made in the United States: an FFL (or the 6-month wait after a US filing) is required before filing abroad, regardless of whether the inventors are US citizens, foreign nationals on visas, or the applicant is a foreign corporation. If the invention was made outside the United States: no US FFL is required even if the inventors are US citizens (although other countries' rules may apply based on residence — e.g., India's § 39 applies to Indian residents). The hard cases are mixed-location inventions: modern R&D teams often span countries, with conception and development split between a US office and foreign offices. If any part of the invention was made in the US, the cautious practice is to treat the FFL requirement as applying. Cross-border teams can face conflicting first-filing rules — for example, an invention jointly made in the US (FFL required) and China (CNIPA confidentiality examination required for the China-made portion). Standard solutions: file a US provisional and request expedited FFL handling, file a Chinese confidentiality examination request in parallel, or file a PCT application at a Receiving Office that both countries accept, after clearing each country's review. This is a situation where experienced patent counsel matters — the right sequence depends on where each inventive contribution was made.

What is a secrecy order and how does it relate to foreign filing licenses?

A secrecy order under 35 U.S.C. § 181 is an order from the USPTO — issued at the request of a defense agency (Department of Defense, Department of Energy, NSA, or other agency) — directing that an invention be kept secret because its disclosure might be detrimental to national security. The connection to foreign filing licenses: the same screening process that grants FFLs is the process that flags applications for potential secrecy orders. Every US application is reviewed by USPTO Licensing & Review; applications with possible national-security implications are referred to defense agencies for a secrecy determination. Effects of a secrecy order: the application cannot be published, cannot issue as a patent while the order is in force, and the invention cannot be filed abroad — no foreign filing license will be granted. Disclosing the invention or filing abroad in violation of a secrecy order carries criminal penalties (35 U.S.C. §§ 182, 186) and abandonment of the application (§ 182). Secrecy orders are renewed annually and can remain in place for years; the applicant can seek compensation from the government for damages caused by the order and for government use of the invention (35 U.S.C. § 183). Scale: secrecy orders are rare and concentrated in defense technology — cryptography, weapons systems, certain aerospace and nuclear technology. The overwhelming majority of commercial software, biotech, consumer products, and general technology applications clear screening and receive the FFL on the filing receipt within weeks.

Do other countries have foreign filing restrictions like the US?

Yes — many countries restrict their residents (or inventions made on their territory) from filing first abroad, and the rules differ in scope and trigger. Notable examples: (1) China: Article 19 of the Chinese Patent Law requires a confidentiality examination by CNIPA before any invention or utility model 'completed in China' is filed abroad. The trigger is where the invention was made (like the US). Sanction: a Chinese patent can be refused or invalidated for the invention if the examination was skipped. The examination can be requested standalone, with a Chinese first filing, or with a PCT filing at CNIPA. (2) India: Section 39 of the Indian Patents Act requires persons RESIDENT in India (trigger is residence, not where the invention was made) to either file first in India and wait six weeks, or obtain foreign filing permission from the Indian Patent Office before filing abroad. Violations can lead to abandonment of the corresponding Indian application and criminal liability under § 118. (3) United Kingdom: Section 23 of the UK Patents Act restricts UK residents from filing abroad without clearance only for applications containing information relating to military technology or prejudicial to national security/public safety — much narrower than the US rule. (4) France, Spain, Italy, Greece, and several other countries have first-filing or authorization requirements, often tied to defense review. (5) Germany, Canada, Australia, and Japan generally impose no restriction on civilian technology. The practical problem is multinational inventor teams: an invention co-developed by inventors in the US (made-in-US trigger), India (residence trigger), and China (made-in-China trigger) can face three different clearance requirements simultaneously. The standard playbook is to identify each applicable regime before the first filing anywhere and sequence clearances — this is a routine but critical part of international patent strategy for distributed engineering teams.