Pretty Stiff Language Here

35 U.S.C. § 185 – Patent barred for filing without license

Notwithstanding any other provisions of law any person, and his successors, assigns, or legal representatives, shall not receive a United States patent for an invention if that person, or his successors, assigns, or legal representatives shall, without procuring the license prescribed in section 184, have made, or consented to or assisted another’s making, application in a foreign country for a patent or for the registration of a utility model, industrial design, or model in respect of the invention. A United States patent issued to such person, his successors, assigns, or legal representatives shall be invalid, unless the failure to procure such license was through error, and the patent does not disclose subject matter within the scope of section 181.

55 thoughts on “Pretty Stiff Language Here

  1. 8

    What happens with joint inventors in two different countries, when each country has a first foreign license requirement? Were do you seek the foreign license?

    Se e.g., US and Spain.

    1. 8.1

      You apply for a waiver of the filing requirement. It’s done all the time.

      1. 8.1.1

        AAAJJ, do you mean that you apply for a foreign filing license? I do not think it would work well all the time. Suppose the invention contains technologies that have military applications, that both the US and Spain would want to block with a secrecy order. Where do you send your application to get a foreign filing licence?

        1. 8.1.1.1

          Normally, you request a FFL from the country with the fastest turn-around, then file in the other country. The US usually responds in a few days, for instance.

          Now, if you actually have something that either or both countries would want to block with a secrecy order, I don’t know how to address that.

        2. 8.1.1.2

          The safest thing would be to avoid ever having any invention be jointly made in separate countries or by different nationals, as AAAJJ describes below in 7.1.2.2.2, even if it makes product development work in a company rather difficult. Otherwise, you potentially end up in a pickle, so that even the effort to obtain a foreign filing license in one country could violate the other country’s laws. This is because many countries (including India and China) have their own export control laws with penalties for their violation.

          In the U.S., “export” includes an actual shipment or transmission out of the United States, including the sending or taking of an item out of the United States, in any manner; and also releasing or otherwise transferring “technology” or source code (but not object code) to a foreign person in the United States (a “deemed export”). This would include the sending of information to a foreign government’s export control office for the purpose of obtaining a license to file in the U.S., because that sending would itself violate U.S. law. You have to pick and choose whose country’s laws you end up violating. If you are an American, then obey U.S. law because its enforcement arm is closest.

          This is the quandry that the current collection of national laws around the world is ill prepared to handle in a multi-national trade environment.

          1. 8.1.1.2.1

            Mark,

            Your comment have been excellent – and much appreciated.

            Thanks!

        3. 8.1.1.3

          The laws differ by country. Some countries require their citizens to file first in their home country regardless of where the invention was made. Some countries only require their citizens to file first in their home country if they made the invention in their home country. Some countries require any invention made in their country first be filed in the country, regardless of the citizenship of the inventor(s).

          At the U.S. facility I worked at we had employees from 55 different countries. Some were permanent residents and could work on export controlled technology and some were on visas and could not work on export controlled technology. Whenever we had inventors who were not U.S. citizens we had to check the law in their home countries. We also had to check for U.S. citizens as we had employees who were citizens working in facilities in foreign countries. And we had to check whether the subject matter was export controlled or not.

          We reviewed the inventorship of every application and the citizenship of every inventor before filing.

          I can’t think of a single case where we requested a waiver/license from a foreign patent office to file in the U.S. first and were denied. I don’t know how we would have resolved it had the situation arisen.

  2. 7

    Let’s also not lose focus in thinking that 35 USC is the only pertinent section here – EAR and BIS need be understood as well.

    1. 7.1

      Good point. The Export Administration Regulations (EAR) (15 CFR chapter VII, subchapter C, parts 730-780) implement the Export Control Reform Act of 2018 (50 U.S.C. ch. 58, § 4801 et seq.) that has largely replaced the former Export Administration Act of 1979. It controls not only export of items in the Commerce Control List (part 774), but of the corresponding technology as well.

      The EAR defines “technology” subject to export controls rather broadly, as including: information necessary for the “development,” “production,” “use,” operation, installation, maintenance, repair, overhaul, or refurbishing of an item. It may be in any tangible or intangible form, such as written or oral communications, blueprints, drawings, photographs, plans, diagrams, models, formulae, tables, engineering designs and specifications, computer-aided design files, manuals or documentation, electronic media or information revealed through visual inspection.

      Presumably this definition could encompass information used for preparing patent specifications and drawings, although if it does I don’t think it is being vigorously enforced. I’m not aware of any case involving the export of information for preparing patent applications.

      1. 7.1.1

        Presumably this definition could encompass information used for preparing patent specifications and drawings, although if it does I don’t think it is being vigorously enforced

        Yes and yes.

        That being said – cavalier and flippant attitudes (as has already been seen) are downright dangerous.

        Some may even want to pause and consider their malpractice coverage.

      2. 7.1.2

        Correct, there does not appear to be case law. However, this is covered by USPTO regulation 37 CFR 5.11 (c), which would presumably receive deference if it were litigated.

        “Where technical data in the form of a patent application, or in any form, are being exported for purposes related to the preparation, filing or possible filing and prosecution of a foreign application, without the license from the Commissioner for Patents referred to in paragraphs (a) or (b) of this section, or on an invention not made in the United States, the export regulations contained in (omitted for brevity…) must be complied with unless a license is not required because a United States application was on file at the time of export for at least six months without a secrecy order under § 5.2 being placed thereon.”

        1. 7.1.2.1

          absolutely quasar18.

        2. 7.1.2.2

          I think the problem with this is that every international corporation has development offices in India and China and often inventors are from India and China.

          So the technical data is already available via servers in those countries by other employees of the those countries and available as part of ongoing development projects.

          So, I think that it would be hard to say that the data was “exported” for the purpose of the patent application and not already “exported” and made available to employees in that country.

          1. 7.1.2.2.1

            Night Writer,

            You seem to want to lump things together that must not be so lumped.

            This post here appears related to our other recent conversation at: link to patentlyo.com

            As I noted, there are differences depending on where the innovation occurs – where the data naturally is developed.

            This is VERY MUCH different than a secondary decision of where to move such data.

            Being an international corporation does NOT give you a pass on data export laws.

            And – by the way – neither does ANY size in view of a non-investigated “well, let’s just move this into the Cloud.”

            It matters very much WHERE those servers “in the Cloud” are – precisely because the EAR and BIS simply do not care why you may have decided to move/export data, the law is only concerned that you did so.

            The connection then between the EAR/BIS and the USPTO simply continues to follow that same path as it did PRIOR TO any of this “in the cloud” marketing.

            The underlying controls — and reasons for those controls — are decidedly NOT NEW.

            The bottom line here – and one that you appear to be somewhat walking back from – is that one cannot so blithely off shore the writing of patent applications because of the fact that it is only after an application IS written and submitted to the USPTO< that an appropriate export license of the data can be obtained.

            As I noted to Atari Man (without casting shade), let me see that published and vetted list of data (by both BIS and USPTO), BEFORE you decide to off-shore any NEW data (after all, we are talking about writing of innovation, mind you).

            Any one doing so is entertaining risk.
            Those who are cavalier and blithely so – are downright dangerous.

            1. 7.1.2.2.1.1

              anon, in practice this is what is happening. And the data is all being shared all over the world for the development of chips, software, AI, and pretty much everything under the Sun except defense related stuff where it stays in the USA.

              1. 7.1.2.2.1.1.1

                You do realize that the distinction you mouth here (development of chips, software, AI, … except defense related stuff) is a grave misnomer, right? That, under the law, it is NOT you that gets to make the clearance decision, right?

                (You being the Royal you, of course).

                Whether or not “this is happening” is an entirely different point.

                LOTS of illegal things ‘are happening’ — all the time.

          2. 7.1.2.2.2

            I worked for a multinational corporation. One of the “top 10 patent grants” year in a year out. Research and manufacturing facilities all over the globe. U.S. Brazil. India. China. UK. Germany. Japan. Etc. At the U.S. facilities projects that were directed to export controlled technology were staffed by employees who were allowed to work on that technology. At the U.S. facility I worked at, employees who were able to work on export controlled technology had one color badge and employees who could not have another color badge. All the dockets in the system that were export controlled were clearly labelled. Access was restricted to those allowed to work on export controlled technology. When we did docket reviews or had other meetings where export controlled technology was discussed, any employees in the room who had the other color badge had to leave the room. If they were on the phone, they had to hang up. If you sent an email to an employee who could work on export controlled technology and they were out of the country, their out of office message would tell you that, and you were required to immediately recall any email that included export controlled technology.

            Companies have been doing this for…ever probably. It’s not complicated. Everybody is trained on it. The procedures are in place. It’s part of the daily routine.

            The hysteria over this nothing burger on this site is ridiculous.

            1. 7.1.2.2.2.1

              Your “nothing to see here” attitude remains me of Cuomo.

              1. 7.1.2.2.2.1.1

                GET.OUT.OF.YOUR.MOM’S.BASEMENT.

                1. One of my bros who is literally a primary examiner 120k+ way back was living in his mom n dad’s basement WITH HIS WIFE AND KID. Literally the utter state. They finally got a place but it took awhile.

            2. 7.1.2.2.2.2

              Everything you are describing is, of course, fine.

              The issue is when a company sends technical data overseas to a third party to ghostwrite a patent application and does not disclose this relationship to the governmental authorities.

              1. 7.1.2.2.2.2.1

                There is no issue if the technology is not export controlled. If I invent a dishwasher and send the disclosure to India or China or Ireland and ask somebody to write an application for it there’s no “issue.”

                As I’ve told you many, many times already, nobody is sending export controlled information overseas for patent drafting. That’s not happening.

                1. 1) you don’t know that
                  2) you don’t get to decide what is or is not export controlled.
                  3) decline to follow the laws and regs at your own risk

                2. The USPTO L+R does look at even innocuous tech like refrigerators. We had one inventor who used to do gov contracts with the military and L+R used to do deep reviews just because of who he was.

                3. 1) I do know that.
                  2) We had a trade control group that reviewed every docket to determine if it was trade controlled or not.
                  3) Nobody is “declining” to follow the law and regulations.

                  You might want to change the channel on your tin foil hat.

      3. 7.1.3

        Good points, and further to my comment below, the same security group that automatically evaluates applications and grants foreign filing licenses shortly after U.S. filings for the vast majority of applications can deny that license and additionally put a secrecy order on the application, A secrecy order creates a number of serious restrictions on attorney and client conduct re that application thereafter until lifted, which may be years later.
        Also note that this same security group can grant a foreign filing license for a draft of an application that is not yet, or never will be, U.S. filed, only foreign filed.

    2. 7.2

      EAR and BIS are in personam, not in rem. And they don’t apply to all technologies.

      1. 7.2.1

        Not to cast any shade, but do you have a published list of ‘safe’ technologies?

        (vetted, of course both by BIS and USPTO)

        1. 7.2.1.1

          Rathe than a so-called “safe” list, there is a list of export controlled technologies in 15 CFR part 774 (Commerce Control List). This is, on the whole, a duplication of the annually updated Wassanaar Agreement list of dual-use goods and technologies (which is easier to read, but with caution since the list as it appears in the CFR governs).

          But also, beware there are additional controls for munitions under the Arms Export Control Act and the corresponding International Traffic in Arms Regulations (ITAR); see the Munitions List in 22 CFR part 121, which is administered by the State Dept. rather than the BIS. (Note: “munitions” does also cover things you might not immediately think of as weapons, e.g. cryptographic software; so don’t think that because it is not a torpedo it couldn’t possibly be covered. It might very well be.) And the export of nuclear materials and equipment is controlled separately by the NRC under the Atomic Energy Act.

          Before assuming anything is safe to export, check and double check.

          1. 7.2.1.1.1

            Further to the above: I apologize to any Dutch nationals who might be reading for misspelling their town’s name; it should be “Wassenaar” with an “e”.

            A good overview of the U.S. export control system and their various statutory authorizations is a report of the Congressional Research Service, R41916 [https://crsreports.congress.gov/product/pdf/R/R41916/58]

          2. 7.2.1.1.2

            One reason why I put it this way is that what we work on — being purported to be innovation over and above any item that may have been previously caught and put on a “safe” list may or may not be an advance over that prior item and – of its own – may or may not be determined separately to be NOT granted.

            Look at Night Writer’s comment for example. Not to pick on him, but it is an excellent example of why it is NOT the innovator that is making the determination as to the green light of allowed export on the innovative item on a case by case basis (as needs to be determined).

            He included chip fab and AI – as distinct from and not included in military secrets.

            That “self-selection” is practically guaranteed to violate the law.

            The larger point here of course (and the one that Night Writer appears to walk back from) is that the “cart before the horse” of off-shoring the data so that third world rates can be obtained for writing a patent application is permissible, when it is the very end work product of the written application that is submitted to be evaluated as to whether or not an export license will be granted.

            Sure, this can be made to be much more nuanced with much higher degrees of fact differentiation, but the ‘top level’ discussion and asserted point cannot hold for what that point was intended (and certainly not without significant risk and the very real potential of malpractice).

  3. 6

    Section 185 needs updating. There are inventions that are made by co-inventors that reside in different countries. Where is the invention made?

    1. 6.1

      Absolutely. This can be an issue when there are co-inventors from at least two of US, CN, IN.

    2. 6.2

      “Where is the invention made?”

      Determined perchance . . . on a claim-by-claim basis?

      Ugh. What a mess that would be.

      1. 6.2.1

        Your ‘perchance’ is accurate, as inventorship itself is determined on a claim-by-claim basis.

        1. 6.2.1.1

          That’s not how the foreign filing requirement works. The claims don’t matter. It’s all about what is disclosed in the application, whether in the spec, figures, or claims. Doesn’t matter. If any of that subject matter was invented in the USA (whether or not claimed) you need a FF license before you file in a foreign jurisdiction. The rule goes back to the Cold War where they were worried about disclosing things like nuclear technology to enemies.

          1. 6.2.1.1.1

            Ah thanks – I see your point and retract my statement.

  4. 5

    Seems rare in the case law. I only have two cases in the APD addressing this ground of invalidity; each are from the 1970s

    Application of Gaertner, 604 F.2d 1348, 1354, 202 USPQ 714 (CCPA 1979) (affirming rejection under 185 for filing nine counterpart CIP applications in foreign countries that included matter not in original US parent application and PTO did not abuse its discretion in denying applicant’s request for a retroactive foreign license where applicant failed to submit statement required by regulations for retroactive license)

    Shelco, Inc. v. Dow Chemical Company, 466 F.2d 613, 617, 173 USPQ. 451 (7th Cir. 1972) (“35 U.S.C. § 185 provides that a United States Patent shall be invalid where a foreign application for the same invention was made without the proper license.” – finding all claims of United States patent invalid under § 185 where inventor filed foreign counterpart applications that omitted a claim requirement for the presence of a type of alcohol for oven cleaner where the inventor had stated in his original application that the presence of the alcohol was essential to the invention, and therefore the foreign applications were for an invention not subject to his foreign-filing license based on his original U.S. application)

    There also is the possibility of criminal sanctions, but I do not have any cases showing such imposition

    [W]hoever willfully, in violation of the provisions of section 184 of this title, shall file or cause or authorize to be filed in any foreign country an application for patent or for the registration of a utility model, industrial design, or model in respect of any invention made in the United States, shall, upon conviction, be fined not more than $10,000 or imprisoned for not more than two years, or both.

    35 U.S.C. § 186.

    1. 5.1

      your APD is excellent and I use it constantly.

    2. 5.3

      I will add a “thank you” – excellent post.

  5. 4

    Likewise fatal for requesting non-publication of a U.S. application an filing a foreign equivalent without withdrawing the non-publication.

    1. 4.1

      Actually, the latitude on this factor is more generous, and is much more easily managed.

      We should NOT (purposefully or otherwise) make it seem like filing a non-publication request is a dangerous thing.

  6. 3

    I wonder how often patent attorneys make this error.

    1. 3.1

      Rare because foreign filing licenses are granted automatically shortly after U.S. filing for the vast majority of applications.

      1. 3.1.1

        It happens when they file somewhere else first, and even filing the first application in a PCT receiving office that is not the USPTO is illegal if the invention was made in the USA. It is pretty rare but there are a handful of decisions on point. I have seen this happen myself in patents that were asserted in litigation. A FF license can be granted “retroactively” but it is hard to get one. The applicant has to explain why they messed up and explain the entire period and show diligence to correct the error.

        1. 3.1.1.1

          In Re Application of Ovsiannikov, 2017 WL 8639913, at *6 (Com’r Pat. Oct. 13, 2017) (“Here, Mr. Yoon was made aware of the proscribed foreign filing in June 2011, and requested and received information regarding the petition for a retroactive foreign filing license, which included several reminders to provide evidence to prepare a petition for a retroactive foreign filing license in 2011, 2012, 2013 and 2014; however, instead of acting with diligence to seek the
          retroactive foreign filing license, Mr. Yoon failed to take action for nearly three (3) years. Petitioner has therefore failed to demonstrate that the license has been diligently sought after discovery of the proscribed foreign filing.”)

          1. 3.1.1.1.1

            Filing a PCT in a foreign Receiving Office is “foreign filing” EVEN if the PCT application designates the United States. So you need a FF license to do that, if the invention was made in the USA.

            See 35 U.S.C. § 368(b); 37 C.F.R. 5.11(a) (“A license … under 35 U.S.C. 184 is required before filing any application for patent … in a foreign country, foreign patent office, foreign patent agency, or any international agency (other than the United States Patent and Trademark Office acting as a Receiving Office for international applications …)”); M.P.E.P. § 1832 (“A license for foreign filing is not required to file an international application in the United States Receiving Office … In all other instances (direct foreign filings outside the PCT or filings in a foreign Receiving
            Office), the applicant should petition for a license for foreign filing …”)

        2. 3.1.1.2

          Have had to do one (not my screw-up, was the in-house client’s). Was not fun, was expensive, and was hard to get granted.

        3. 3.1.1.3

          As the number of co-inventors per invention steadily increase, particularly where the inventorship is more and more multi-national, this issue will likely crop up again. This could be especially problematic where the other countries have similar security laws in their patent statutes. While most inventions do not raise any national security issue, each country gets to decide what does or does not qualify for a security review and for a foreign filing license. Consider, e.g., the case where a company has employee-inventors working jointly in both the U.S.A. and P.R.China on a project. Each country might require the patent application to be filed in their own country first, and to obtain a license in advance in order to file in the other.

          When conception is in several countries simultaneously, the question becomes where is the invention “made”. Is there any case law out there on how one actually determines whether an invention was made in the U.S. or instead in a foreign country (or jointly made in both/all countries) whenever the co-inventors are from several countries?

          As U.S. patent practitioners, we’d naturally simply file first in the U.S., obtain the foreign filing license from the USPTO before filing elsewhere, and ignore any applicable foreign laws (or feign ignorance). But, given draconian penalties in some countries for security violations, perhaps we shouldn’t put our client’s foreign co-inventors at potential risk and not simply assume the invention was made in the U.S. without legal advice in the country/countries concerned.

          1. 3.1.1.3.1

            “Is there any case law out there on how one actually determines whether an invention was made in the U.S. or instead in a foreign country (or jointly made in both/all countries) whenever the co-inventors are from several countries?”

            Nope.

        4. 3.1.1.4

          yes – it happens. Most complex case I had: inventor was a citizen and resident of US and we filed provisional in US. Then US citizen moves to India with intent to immigrate (family was aging) before the 12 month conversion date. At 12 month date he would be a resident of India (under Indian tax law) and that would require first filing in India or risk criminal charges (yes – criminal). Ended up converting to non-provisional in US shortly before inventor became formal resident of India and months before 12 month conversation deadline.

          Also learned that criminal penalty in India for failure to first file in India used to include beheading (this has been corrected) but it is still a criminal offense if I remember correctly. In comparison, invalidity of the patent seems mild.

  7. 2

    Thanks for amplifying this issue, Dennis.

  8. 1

    Topical.

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