Security provisions: Not Just for Defence Related Inventions
This article was included in our Summer 2010 edition of Inside IP magazine.
Many countries around the world have security provisions restricting the filing of patent applications for inventions which are developed in that country. These restrictions are primarily intended to prevent inventions that are prejudicial to national security, or the safety of the public, being distributed outside the country, for example inventions related to military technology, atomic energy or cryptography. However, in several countries the security provisions apply equally to all inventions, irrespective of whether they are prejudicial to national security. These security provisions may therefore affect the decision regarding the country of first filing.
The security provisions applicable are generally based on the location of the inventor when the invention was made, which may differ from the normal residence of the inventor. The nationality of the inventor may occasionally also be of relevance. It is therefore important to know in which country or countries the invention was made, and the citizenship of all the inventors, before filing any patent applications.
The security provisions in each of the identified countries can be typically met in one of two ways. Firstly, and often the easiest, is simply to file the first patent application in that country. Many countries review all first filings (i.e. patent applications without a priority claim), and permission to file abroad is deemed to be granted if no secrecy order is imposed within a set time period, which is generally between six weeks and six months. Secondly, permission to file abroad can be specifically requested. Although permission should be sought prior to filing, retrospective permission may be possible after inadvertently breaching the security provisions. When the inventors are based in two different countries each having security provisions, one solution is to obtain a foreign filing licence from one country and then file the patent application in the other country.
The security provisions for some common countries will now be briefly explained.
The United States requires that the application is first filed in the US, or a foreign filing licence is obtained, for all types of technology invented in the US. Foreign applications should not be filed until six months after the initial US filing. A retrospective licence may be available if the foreign filing was an innocent error, and the subject matter is not related to national security.
Similarly, China has security provisions for inventions relating to any type of technology made by an inventor in China. The provisions can be met by filing first in China; either by filing a Chinese national application or a PCT application. It is also possible to obtain permission to file first outside China, which is expected to take around two months.
France has one of the harshest penalties for failing to comply with the security provisions: failure may be considered a criminal offence and result in up to 15 years in prison or a large fine. The security provisions apply to an invention made in France for any type of technology. However, as an alternative to initially filing a French patent application, a European application can be filed through the French Patent Office in an official EPO language. A translation into French is not subsequently needed. Permission to file abroad can be obtained from the French Ministry of Justice, and typically takes around two weeks.
India is another country that requires foreign filing permission for any type of technology made in that country. Alternatively, an Indian application can be filed first in English, and permission is considered to be granted in six weeks.
However, the security provisions in other countries, such as the UK and Germany, are not as strict, and a number of countries do not have any security provisions at all. In particular, Japan and Australia do not have any requirement for first filing or a foreign filing licence.
The UK has security provisions for a broad range of inventions deemed prejudicial to national security or the safety of the public, but there is no restriction on other types of technology. For inventions with both a possible military and civilian use, we recommend obtaining permission to file abroad as a precaution. Permission can be obtained very quickly, often the same day as requested. Alternatively, a European or PCT application can be filed through the UK Patent Office, meeting the rules. Similarly, Germany only requires first filing in Germany, or permission to file abroad, for a technology which is a “state secret”. This is considered to mean that the invention is defence related.
In summary, it is highly recommended to determine who should be named as inventor prior to the first filing, and in which country the invention was made. The subject matter should also be briefly considered for any possible national security issues. We can advise on the selection of the country of first filing, and/or whether a foreign filing licence should be obtained, as the decision on where to file first can be based on both security provisions and other issues such as filing costs, issuance of an early search report or a desire to obtain early grant in a particular country.