How to file patent applications in different jurisdictions
There is no shortage of pitfalls in patent law. The consequences of mistakes can often be very serious. In the worst case, granted patent rights can be revoked in a dispute as a result of poor ground work – especially when you file your first patent application in a jurisdiction where you shouldn’t.
“It’s critical that companies follow the correct “First Filing Restriction” guidelines since failure to follow national law in this regard could, in a worst case scenario, result in the loss of the patent,” says Christian Arkelius, Partner and European patent attorney at Ström & Gulliksson.
Applying for patents in today’s age of global scale international commerce and business is indeed a tricky thing. With product development taking place on a global scale and with teams being spread across the globe with team members having different nationalities etc you need to be aware of the requirements of each single country where you do your research and where the inventions are created.
“You need to be aware not only of the fact that different countries apply different rules when it comes to where it is allowed to file the first patent application for an invention, but you also need to know how to navigate all these different rules properly,” says Arkelius and emphasizes the importance of strategic intellectual property counseling in order to keep fully aligned with case law and developments in these areas.
“If you are a registered British company with British researchers who are working in China, you would have to file the first patent application for any of the team´s inventions created and developed in China at the local Chinese Patent Office.”
But it is even more complex than this, says Arkelius and explains the challenges of multinational research teams and groups:
“There are several stipulations that makes it even more complicated and these situations call for strategic advice. There are countries that stipulate that when a person or a company that is a national of that country files a patent application, the actual patent application must be filed in the country of that national. And in addition to this – this may be so regardless of where in the world the invention was actually created or developed.”
An example of a country that applies this rather unique requirement is Greece. In Greece, nationals are obliged to file the first patent application for an invention in Greece.
“Typically, and this makes things more complicated, the national laws of different countries are not always easily combined. Quite frankly, the different national laws are not always in harmony with each other. For example, the national law in Greece seems to disregard the fact that a Greece national may be working in a cross-national team of people for a Swedish-based company and, still, the Greece law restricts the first filing of this national to Greece. With the correct legal advice, our aim at Ström & Gulliksson is to help our clients to avoid potential legal hurdles in this respect. By providing early counseling and guidance in situations like this, our aim is to avoid potential future disputes or unenforceable patent rights.”
The restrictions might also depend on what technology the first patent application relates to. Many countries only apply first filing restrictions to technology that is or could be in the interest of the State in question or which relates to military technology or defense inventions. In contrast to the U.S and China with the “Made in the USA” and “Made in China” restrictions, the U.K. is one example of a country that applies this type of ‘narrower’ first filing restriction.
“There exist several purposes of this type of restriction, but the main one is to enable governments to approve inventions before they are being widely disseminated around the globe. An approval from the government gives the company freedom to file inventions anywhere in the world. In some countries, there are examples where failure to abide these restrictions concerning the first patent application has led to fines and even criminal proceedings which also is a proof of the value of patents and the importance of handling the process correctly.”
Some explanatory examples of situations that multinational companies need to take into consideration to meet requirements:
A British national inventor living in France? He could have to file the first patent application of the invention in France, even if the invention was developed in the UK. Why? Because France has a stipulation that the residents (applicants) of the country must file a first patent application in the country, regardless of their nationality.
A research group consisting of a few British inventors and one greek inventor? If the group includes a Greek inventor, then the first patent application for any inventions developed by the group should in theory be filed in Greece – according to Greek national law. It becomes trickier if the inventors created the invention in, e.g., the U.S. or in China.
Ström & Gulliksson provides tailored counselling in European patent law all over the world and we will guide and support you through the application process as well as through potential legal hurdles and disputes. Our authorised European Patent Attorneys have wide-ranging experience of European patent law. We also provide the service of summarising the restriction for each country, and give advice when it comes to nationals and residents include both natural and legal persons.
This discussion is provided without guarantees and is not to be considered legal advice. We highly recommend seeking legal counsel in the country of invention. Any invention which may have a military application or could be considered important to national security is likely restricted not only by a country’s patent laws, but also by export laws, which are not addressed here.