The U.S. Patent Act states that “Except when authorized by a license obtained from the Commissioner of Patents a person shall not file or cause or authorize to be filed in any foreign country prior to six months after filing in the United States an application for patent or for the registration of a utility model, industrial design, or model in respect of an invention made in this country.” This means that, for an invention first conceived or reduced to practice in the U.S., by any of the inventors of such invention, any patent application shall first be filed in the U.S. Why? Because Uncle Sam wants to be sure any inventions made in the U.S. can be reviewed for national security concerns before they get published to the world or filed abroad.

Before an applicant for an invention made in the U.S. can file for a patent in a foreign country, the director of the U.S. Patent and Trademark Office (USPTO) must issue a license called the “Foreign Filing License”. The reason for foreign filing licenses is to prevent potential compromises to national security through the inadvertent or intentional disclosure of sensitive information to foreign entities.

After you file your patent application in the U.S., its content is screened (by bots) that search for specific key words that may indicate content of a national security concern for further review by the USPTO. Your application filing receipt will indicate whether the foreign filing license was granted or not.

If a foreign filing license was not granted, you might receive a secrecy order. Secrecy orders are quite rare. Even us practitioners dealing regularly with dual use (military and commercial) technologies, for example in space-tech, rarely if ever see a secrecy order.

Failing to follow foreign filing procedures can result in losing U.S. patent rights or facing penalties, including fines or imprisonment for secrecy order violations.

Simply apply for a U.S. patent application. The application’s filing receipt will provide further information as to the status of the foreign filing license. It will say “IF REQUIRED, FOREIGN FILING LICENSE GRANTED,” which indicates that you can apply in other countries. If that DOES NOT appear, wait 6 months. If no notice is received from the USPTO 6 months after the filing receipt is issued, you are automatically authorized to file patent applications in other countries or an international patent cooperation treaty (PCT) application. If you need to file in a foreign country before the end of the 6 months, you can work with a registered patent attorney to petition for a license, although there is rarely a reason such foreign filing is so urgent.

If your patent application receives a secrecy order, you must get consent from the Director of the USPTO before filing abroad. The secrecy order will detail your rights and options.

See our other article titled “What Is a USPTO Secrecy Order? Everything Inventors Need To Know, Especially Space-Tech People”.

Patent law is complicated, especially if you have a multinational team of inventors. Before you make a mistake that may cost you all of your patent rights, talk to an attorney at Peacock Law regarding filing strategy.