Global Patent Prosecution - July 2019: Foreign Filing Requirements in Europe

Sterne, Kessler, Goldstein & Fox P.L.L.C.
Contact

Sterne, Kessler, Goldstein & Fox P.L.L.C.

[co-author: Shyam Pandula]

This article discusses foreign filing requirements in Europe—in particular, the United Kingdom and Germany. Assuming each is the country of invention, the following questions are explored for each jurisdiction: (1) who needs to seek permission to file a patent application outside the country of invention?; (2) what is required to file a patent application outside the country of invention?; and (3) if any, what remedies are available if permission is not initially sought to file a patent application outside the country of invention?

The United Kingdom

  1. 1.Who needs to seek permission to file a patent application outside the United Kingdom?

A UK resident seeking to file its patent application abroad is required to first obtain a foreign filing permit from the UK Intellectual Property Office only if Section 23-(1) Subsection (1A) of the UK Patents Act applies. Subsection (1A) applies if: “(a) the application contains information which relates to military technology or for any other reason publication of the information might be prejudicial to national security; or (b) the application contains information the publication of which might be prejudicial to the safety of the public.” For example, if the subject matter of the patent application was developed with the UK’s Ministry of Defense (or one of its agencies), then a foreign filing permit should be obtained by a patent applicant.

  1. What is required to file a patent application outside the United Kingdom?

If Section 23-(1) Subsection (1A) of the UK Patents Act is applicable, an applicant (who is a UK resident) cannot file its patent application outside the United Kingdom unless (1) it has first filed the patent application with the UK Intellectual Property Office at least six weeks prior to the application being filed outside the United Kingdom and (2) either no directions have been issued by the UK government prohibiting disclosure of the information in the patent application or such directions have been revoked.

If Section 23-(1) Subsection (1A) of the UK Patents Act is not applicable, an applicant is free to file its patent application outside the United Kingdom without obtaining a foreign filing permit.

  1. If any, what remedies are available if permission is not initially sought to file a patent application outside the United Kingdom?

Filing a patent application outside the United Kingdom, in violation of Section 23 of the UK Patents Act, could result in criminal penalties. There is no provision for retroactively requesting a foreign filing permit to remedy the noncompliance. When in doubt, applicants should seek a foreign filing permit at the UK Patent Office.

Germany

  1. Who needs to seek permission to file a patent application outside Germany?

An applicant seeking to a file patent application outside Germany must request a secrecy review if its patent application contains a state secret. According to Section 93 of the German Criminal Code: “State secrets are facts, objects or knowledge which are only accessible to a limited category of persons and must be kept secret from foreign powers in order to avert a danger of serious prejudice to the external security of the Federal Republic of Germany.” Inventions from particular technology fields, such as weapons technology and nuclear technology, may be considered state secrets.

  1. What is required to file a patent application outside Germany?

Section 52 of the German Patent Act states that: “a patent application containing a state secret (Section 93 of the Criminal Code) may only be filed, outside the territory to which this Act applies, with the written consent of the competent highest federal authority. Consent may be given subject to conditions.” If the patent application does not contain a state secret, the applicant is free to file outside the Germany without undergoing a secrecy review.

  1. If any, what remedies are available if permission is not initially sought to file a patent application outside Germany?

Filing a patent application outside Germany, in violation of Section 52 of the German Patent Act, could result in criminal penalties. There is no provision for retroactively requesting a secrecy review to remedy the noncompliance. If an applicant is in doubt as to whether its patent application contains a state secret, the applicant should consider requesting a secrecy review.

Considerations for Patent Applicants

Applicants should carefully consider their patent filing strategies for any inventions made in the United Kingdom and Germany to avoid criminal penalties. There are no provisions for retroactively authorizing filing abroad to remedy noncompliance in these countries. Hence, if an applicant is in doubt as to whether its patent application contains sensitive information, the applicant should seek the proper review by each country’s patent office.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© Sterne, Kessler, Goldstein & Fox P.L.L.C. | Attorney Advertising

Written by:

Sterne, Kessler, Goldstein & Fox P.L.L.C.
Contact
more
less

Sterne, Kessler, Goldstein & Fox P.L.L.C. on:

Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
Custom Email Digest
- hide
- hide

This website uses cookies to improve user experience, track anonymous site usage, store authorization tokens and permit sharing on social media networks. By continuing to browse this website you accept the use of cookies. Click here to read more about how we use cookies.