WEBVTT
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Good day, and welcome to the Patently Strategic Podcast, where we discuss all things
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at the intersection of business, technology, and patents. This podcast
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is a monthly discussion amongst experts in the field of patenting it's for inventors,
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founders, and IP professionals alike, established or aspiring.
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In today's episode, we're bringing you along for a tale of international mystery
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and intrigue and into of the clandestine world of foreign filing licenses.
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This is another topic that falls squarely into the domain of patenting
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sharp corners, surprisingly sneaky and easy to overlook, but can
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come with significant consequences if you do. Many countries,
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including the US. Require inventors to receive special permission to file
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with patent offices outside of the inventors or inventions country.
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A foreign filing license is a government issued document that represents
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this permission for inventors and companies to file in foreign countries. Failing to
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receive this permission can come with some pretty serious ramifications,
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including fines, patent revocation, and even imprisonment.
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That's right, imprisonment. Why so serious? Well, like with
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most matters of foreign export, compliance comes down to each nation's
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strong desire to protect its own security and economic interests.
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Allowing ideas to cross borders comes with the risk of the unauthorized exportation
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of technologies, and sensitive information could have implications for military
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applications, national security, and even state secrets.
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But whether it's a grip for a golf club or a new gadget worthy of
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a sinister Bond villain laugh, there are oftentimes no technology category exceptions
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for many countries with foreign filing license requirements. All patent applications
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destined for international travel, whether utility, plant, or design,
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must all receive a foreign filing license before being
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filed abroad. According to our research, there are at least 35
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countries with foreign filing requirements, and according to WIPO, this includes
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30 of the Patent Cooperation Treaty participants. It's hard
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to imagine an international strategy that would not be impacted, with notables on
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the list that includes the likes of the US. China, India,
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Germany, and the UK. Further complicating all of this is the
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strong potential for jurisdictional conflicts. Requirements for filing
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licenses can vary significantly from country to country and may even
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conflict in some cases. Some countries base their requirements on
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inventor or applicant citizenship, residency, or place of business.
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Other countries are more concerned with the location of the inventive activity.
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Many of these countries require inventions to be filed first with their respective
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patent offices. But what if inventors reside in multiple jurisdictions,
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each with first file requirements? An idea co conceived
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in the US. And India on a teleconference is now subject to
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two competing foreign filing jurisdictions. With a rise in distributed
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workforces teleconferencing and outsourcing, both inventors and inventive
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steps will more and more frequently be residing and occurring across legal
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boundaries. The lines of innovation are rapidly blurring, but the patent laws of
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each country must still be obeyed. Complicating factors that inventors
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and practitioners will need to consider and conflicts they will need to reconcile
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include things like inventor citizenships and residencies, locations of the
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business entities, each jurisdiction where inventive activity occurs,
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and potential inventive sensitivities, including implications for military applications,
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national security, and state secrets. And while this plot may seem
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sinister and perilous, you need not be shaken or stirred. In this month's
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episode, Aurora's newest O patent agent and first time
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patently strategic guest host Ty Davis leads a discussion along with
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our all star patent panel, breaking down the three main categories
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of filing license requirements, strategies for data collection and
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how to navigate potential conflicts, and some example, walkthroughs of
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international filing conflicts and their resolutions. The group also discusses
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some very practical tips for practitioners and businesses to consider in their foreign filing
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strategies. And no good spy tail would be complete without some cool gadgets and gizmos,
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but we've had the Q division of Aurora working on a table that visually outlines
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the research we've done on the countries you'll need to consider. We'll be including
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a link to the PDF in the show. Notes. Ty is joined today by our
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always exceptional group of IP experts, including Dr.
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Ashley Slote, president and Director of Patent Strategy at Aurora,
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kristen Hansen, patent strategist at Aurora and Dr. David Jackrell,
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president of Jackrill Consulting. All right, take it away,
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Ty.
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All right, well, cool. We'll jump into foreign
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filing. Yeah, definitely spent
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some time researching this.
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It took a little while to kind of formulate into a presentation.
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But what I was kind of thinking about doing was talking
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about foreign filing licenses, why we care first off.
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And then types of countries with respect to foreign filing
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licenses start developing a
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strategy for what data we need to
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kind of formulate what our plan will be as practitioners
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and then some potential conflicts of
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that data and then run through. I put two examples
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that are kind of interesting and kind of wrap a lot of things together and
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then summarize as kind of through the practitioner
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lens what the takeaways would be, and then
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maybe a little bit on the business side lends what
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the takeaways would be. So without further
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ado, foreign filing licenses. So,
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as we all know, some countries have foreign filing license
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requirements. Applications can be made in other
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countries. And one interesting note that I
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found on the World Intellectual Property Office website
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was a statement that they made, which is, in most
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cases, you are considered to have
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permission to file with another patent office. If you either have filed
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an application for the same invention at the relevant
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national patent Office a certain time of amount of
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time previously which varies from patent office to patent office and
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have not received a security notice stating that you should not
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file elsewhere or if you have explicitly requested and
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had been granted permission. So this sounds very
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familiar to us. This aligns pretty well with the USPTO.
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Procedure, but it's in most cases.
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So with respect to foreign
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filing licenses, I kind of boiled this
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down to three types of countries with
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two subcategories. The first type, which would be
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countries without any foreign filing license requirements,
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notably Japan, Hong Kong, Mexico,
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South Africa, Switzerland, Thailand, these countries,
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this is going to be your easiest case scenario.
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And then you have your second type of country with foreign filing
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license requirements based on inventor, citizenship,
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residency, or in some countries, applicant citizenship
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residency or place of business when your applicant
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is perhaps a business entity,
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notably this would be Belgium,
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India, Israel, Italy, United Kingdom
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are among that group of countries.
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And then the third type, which we're going to be the most familiar with,
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are countries with foreign filing license requirements based
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on the location of the inventive activity,
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including the United States. Notably, you have China,
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Germany, Russia, Spain being among
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that group as well. And then getting
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a little bit deeper is two subcategories,
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which would be both the second and third types, but with
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the added limitation that the invention pertains to either
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national security, state secrets, and or
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military applications, which we'll have
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that kind of wrapped up in one of the examples.
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And so in my opinion, what kind
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of covers the data mining
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side for the practitioner would be the three questions
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who, where, and what?
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When we asked the question, who we're looking for the
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inventor or group of inventors,
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citizenship, residency,
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as far as the applicant, once again,
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citizenship, residency, maybe location of business,
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start putting these things together, especially in regards to that second
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category of countries.
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We then look at where the inventive activity occurred.
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And this one can get a little bit sticky when you
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start considering that inventive invention
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concepts can have portions that actually occur in different
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locations. And I added a little note there that when
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you start thinking about the increased use of teleconferences
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remote collaborations, you can have some added complexities
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there. So you're spitballing with an
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engineer in India or something, and he comes up with a
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portion, and you come up with a portion. You are now subject
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to two countries foreign filing jurisdictions.
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And then finally, to wrap in those
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two subcategories, we want to identify what has
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been invented if that relates to military application,
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national security, or state secret.
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And just do a little added note here. When it
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when it comes to some of the more serious ramifications of
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improper foreign filing license procedures,
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this is where one can get in a real bind.
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If you knowingly
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or willfully divulge this
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information, that's where fines,
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patent revocation, or even imprisonment can
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factor in. So it's a good one to
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keep in mind in your research tie then.
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Yeah, I don't know what you found or didn't find, but if
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in theory, let's say it's a
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fancy new chair, right, clearly not a military application,
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clearly not like a recliner, right? Clearly not national
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security, clearly not a state secret in your research then,
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is it? If an
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inventor is not going to be fined for that? Or is there still
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those implications even when you're outside of
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these areas?
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Yeah, I guess if you're dealing with a
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subcategory where
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it is only within the jurisdiction when it's a military application
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or national security, I would think that you're
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outside of that in other I
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mean, you look at China or the US. Or whatever,
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if you're not going through the actual steps of receiving
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that foreign filing license, you can still get in a bind even on something
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like that. That makes sense.
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I hope that answers your question there. Well, it sounds like fine and things like
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that is still likely or could be levied,
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but pie maybe imprisonment would be maybe overkill for yeah.
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And really, the only places that
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I seem to see that was, like I said,
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when you
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have material that's pursuant to a secrecy order or
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something and you knowingly and willfully divulge
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those secrets, that's where the imprisonment
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seems to be brought up. Yeah, I think
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the imprisonment, but even if it isn't willingly
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and purposefully divulged, you can still receive
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fines and receive a block of a patent on those.
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The way I look at this topic in general, it's just good to get it
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right no matter what you're doing, no matter what country. And the
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way you do that is, first of all, you have to realize,
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okay, I'm not filing US. Only where else am
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I filing? Where are my inventors from citizenship wise, residence wise,
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and apply all those facts and then look it
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up every time without fail?
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Even if I know France needs a foreign filing license, if it's
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an inventor that lives in France and is a resident
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of France, even though I know that in my head every single
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time I look it up because it might have changed, I want to get it
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right. I want to best protect the client. And so I look it up every
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time, right? Yeah. I think awareness is
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part of it. And then to add to that
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something I've seen over and over in every blog that I read was
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you can figure all these things out, but at the end of the
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day, it's always best to refer to an associate
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that is a local and knows the ins and outs.
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I know from just personal kind of experience, india can be
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very problematic. You have inventors who are
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Indian citizens.
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Is there best practices or
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things to watch out for? And you have
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those categories. So India is in that second category.
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So if you know you have inventors in whatever category,
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is there some kind of a sheet that you can give to us
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for that? Well, that's what I was in the
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table that I was building was kind of trying to formulate a
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cheat sheet. And as you bring up,
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India is kind of interesting.
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Their cut off would be whether or not you are
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a tax resident of India, which is if you live there
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for 183 days out of the year,
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there's a little bit. Interesting enough, I actually have that
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as one of the examples. So we'll dive a little bit deeper into that.
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I think the only other thing I learned recently about India, which is like
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this, is just making sure you always make sure your inventors,
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you maintain a good relationship with them, but you
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need a poverty from every single inventor
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to do a foreign filing license request,
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even if you have an applicant. So if you've
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burned the bridges with half of your engineering team and aren't going to say anything,
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you might be kind of sol a little bit interesting.
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Fun fact, don't take people off in general.
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Yeah. And I can't remember if that applies to more than India or not.
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It's kind of a packet that you need to send to India to get a
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form filing license. But I can't recall if there are other countries that are
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that stringent. Right? Yeah.
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So as far as, I don't know,
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generic potential conflicts and this isn't
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exhaustive list, but I'd just say this is kind of more the more
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commonplace. You could have two or more
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inventors or applicants having different citizenship,
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residents within countries for the second category,
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two or more inventors performing inventive activity
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in two or more of the countries from the third, where we were kind of
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breaking that down. And then the last one, you could have
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even a single inventor or two or more with citizenship
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and or residency in a country from the second category,
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but conceiving the invention, or inventive portions within
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a country from the third.
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Like I said, there are others, but I would say these are the more
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common. So looking at an
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example of this, our first example,
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say we had a US company has an
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in person workshop at their US based headquarters.
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As part two company employees attend.
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Employee A is a Chinese resident working for
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a Chinese branch of the company who's at the in person workshop.
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And then you have employee B,
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David, which for five months of the year is in the US.
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But then returns to his family in India for seven months of
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the year during the workshop, the two employees
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in a manufacturing process that greatly increases the efficiency
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of the company's manufacturing. As such,
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the company wants to pursue intellectual
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property development on this. So what
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conflicts could we have here?
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Just jumping right into it. The Chinese foreign filing
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jurisdiction is not invoked, being that China
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is of the third category, like the US. So they only care where
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the inventive activity occurred, since other than the US.
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China is not involved. But where we run into
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the conflict is, yes, we have inventive activity in the
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US. And on the Indian foreign filing
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jurisdiction, employee B is technically a tax resident of
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India. So now we have two conflicting
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foreign filing jurisdictions. Nice enough for
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us. The USPTO. And the IPO are
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pretty they allow you to obtain
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a foreign filing license without first filing
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an application. So that gives us two options there. First option,
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file requisite documents with the Indian Patent
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Office, wait for permission, typically within three weeks,
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and then you could file at the USPTO. Or you could do the inverse of
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that, where you file the requisite documents with the USPTO. Wait for
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permission. Maybe the deciding factor
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here is it does seem like the timeline as far as
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going through on the second option could be
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faster. Typically within three days of the receipt
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of the expedited petition, you're going to have that
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NFL. It is faster. It usually takes about a week.
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If you do it Friday, the prior week, it will probably take about a week.
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If you do it Wednesday, it might take a couple of days.
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I don't know why just the US Patent Office is weird that way.
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But the first option, note that three weeks is less
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likely. That's best case, when I have requested
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this in and around Indian holidays or in
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and around busier times for the IPO,
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it can take up to six weeks. So just be aware that you might want
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to do this earlier. And the
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problem with doing it a little earlier is India actually asks for a
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good chunk of the document to be done. And so you're kind of submitting maybe
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some claims, maybe some description. So that's kind of
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hard. You can't really get out of the invention, call and send
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off a paragraph to India. They want a little bit more than that.
19:57.070 --> 20:00.646
That being said, I've done it with just a paragraph in a claim, and I've
20:00.678 --> 20:03.900
gotten the form filing license. But you could get pushed back,
20:04.210 --> 20:07.600
and they want more. They don't know what it's about.
20:08.290 --> 20:11.200
Got you. Yeah. Thank you for that.
20:11.650 --> 20:15.314
When you're saying file requisite documents, you're saying,
20:15.432 --> 20:19.842
file a foreign filing license request right,
20:19.896 --> 20:22.946
in the documents. And so and you have
20:22.968 --> 20:26.802
to wait for the permission before you file the application in any in either
20:26.856 --> 20:30.322
country, right? Yes. Yeah. And as Kristen said,
20:30.376 --> 20:34.578
you know, you do you have to have a pretty much full disclosure
20:34.754 --> 20:38.390
of the invention in those requisite documents.
20:39.290 --> 20:42.282
Your target one, you could file directly into India, though, right?
20:42.336 --> 20:45.386
Like, you wouldn't have to do the foreign filing in advance. Right. You could just
20:45.408 --> 20:48.906
say, oh, we want to file first in India. You can. You just need a
20:48.928 --> 20:50.640
foreign filing from the US.
20:53.570 --> 20:57.066
But you can't file it in this case because it's weird and there's
20:57.098 --> 21:00.618
these conflicting jurisdictions. You can't file
21:00.634 --> 21:04.078
in India first before you have a foreign filing license from
21:04.084 --> 21:07.940
the US. Right? That's correct.
21:08.790 --> 21:12.354
Either way, you need to get that NFL from the
21:12.392 --> 21:15.940
country that you're not filing in first. Right.
21:17.850 --> 21:21.478
Since this one's India and US, you could get away with just filing a
21:21.484 --> 21:25.270
Pct instead. Like, India is part of the Pct.
21:26.970 --> 21:30.582
That's like, worst case. Right? Because it's expensive.
21:30.646 --> 21:33.866
We don't always want to do that, especially if it's going to
21:33.888 --> 21:38.538
be a provisional first with
21:38.544 --> 21:42.320
the Pct. You would still have to get
21:42.850 --> 21:47.070
the NFL from India, but would find the Pct satisfy
21:47.410 --> 21:51.200
the US. If you did with your US receiving Office, is it the US company?
21:52.130 --> 21:55.618
I would believe it would be almost the
21:55.624 --> 21:58.050
same for national or Pct.
21:58.710 --> 22:02.706
You're still going to need that. The other
22:02.808 --> 22:04.500
countries NFL first.
22:05.830 --> 22:09.398
Is India part of the Pct? They are, but I didn't think that
22:09.404 --> 22:13.462
the Pct could satisfy that, so I think
22:13.516 --> 22:16.422
it can, but I'll look it up and I'll get back to you. Yeah,
22:16.476 --> 22:19.900
that actually and I also wonder
22:20.430 --> 22:24.502
if you go Pct and then a national stage
22:24.566 --> 22:28.026
conversion versus a Pct like in the US, we often do a
22:28.048 --> 22:31.598
con from the Pct, not a national stage. So I wonder if
22:31.604 --> 22:35.760
there's different rules there as well. You mean from
22:36.530 --> 22:38.880
if an NFL was needed?
22:42.050 --> 22:46.526
I'm not sure if the Pct does satisfy
22:46.718 --> 22:49.954
or basically give you a foreign filing license for
22:49.992 --> 22:53.234
all of the countries that are Pct members, then you might
22:53.272 --> 22:57.154
be fine for a national phase application, national stage.
22:57.202 --> 23:00.918
But if you rather file a con
23:01.004 --> 23:04.738
from the Pct instead of a national phase national stage
23:04.914 --> 23:08.314
application, then maybe that's different. Maybe because
23:08.352 --> 23:11.926
it's a con rather than in the US, we often file
23:11.958 --> 23:18.426
cons rather than national stage because it's go
23:18.448 --> 23:22.042
ahead. Yeah. What this says is a license for foreign filing is not
23:22.096 --> 23:25.706
required to file an international application in the United States Receiving
23:25.738 --> 23:29.466
Office, but it may be required before the applicant or the US Receiving
23:29.498 --> 23:33.206
Office can forward a copy of the international application to a foreign
23:33.258 --> 23:36.562
patent office. So you may run into it, but it won't bar
23:36.616 --> 23:38.450
you from filing the Pct.
23:40.150 --> 23:43.826
My understanding was that honestly, not getting
23:44.008 --> 23:46.720
an NFL from any of these,
23:49.210 --> 23:52.886
I don't think it's anybody's job to verify that all the
23:52.908 --> 23:56.326
applications coming in from wherever they're coming in had
23:56.348 --> 24:00.314
an NFL from wherever they were supposed to have an NFL. But if
24:00.352 --> 24:04.940
you go to assert it against somebody,
24:05.870 --> 24:09.802
in theory they would be reviewing all of this and
24:09.856 --> 24:13.598
verifying whether you did. If you dotted all your eyes, crossed all
24:13.604 --> 24:16.654
your T's, whatever, and then saying, well,
24:16.692 --> 24:20.560
look, they never got an NFL from whatever country and they should have.
24:21.010 --> 24:25.934
And now that's a grounds for revocation of the patent. Because that
24:25.972 --> 24:29.666
was my understanding that again, it's nobody's job to sit there and say,
24:29.688 --> 24:32.946
oh, new patent applications coming in yet this one has an NFL, this one needed
24:32.968 --> 24:36.514
to want there's going to be the ask for a nationality
24:36.562 --> 24:40.274
resident. But is there really somebody at those patent offices verifying
24:40.322 --> 24:43.478
stuff? No, it just happens after the
24:43.484 --> 24:47.334
fact. If it's litigated or upheld in some
24:47.372 --> 24:51.354
other way later, you can just have it nullified, which is a
24:51.392 --> 24:55.020
problem. Yeah. Not to understand that
24:56.990 --> 25:00.606
awesome. Well, I did have a second example,
25:00.708 --> 25:04.334
which is kind of fun. In this
25:04.372 --> 25:08.510
one, we have an Israeli inventor and a Canadian inventor.
25:08.930 --> 25:11.790
The Canadian inventor working in the private sector,
25:12.310 --> 25:16.514
these two inventors invent a mousetrap and
25:16.552 --> 25:20.146
are working together via teleconference when they conceive of the
25:20.168 --> 25:23.662
invention. So we have inventive activity occurring
25:23.726 --> 25:26.070
in Israel and Canada.
25:27.530 --> 25:31.286
What sort of NFL conflicts do
25:31.308 --> 25:35.238
you think that we would have here? I can't remember where I
25:35.244 --> 25:40.494
think Israel was in the second category. I can't remember where Canada wasrael's.
25:40.562 --> 25:44.106
State secrets and stuff. Exactly. So this
25:44.128 --> 25:48.314
was kind of interesting. You would almost think you'd have conflicts, but there
25:48.352 --> 25:51.674
are none. Canadian inventor is in the private sector,
25:51.722 --> 25:55.482
not a government employee, and so not subject to Canadian
25:55.546 --> 25:59.486
NFL requirement. And then, as Kristen alluded to
25:59.588 --> 26:03.362
inventions not related to weaponry, ammunition, or subject is
26:03.416 --> 26:07.054
otherwise military value. So the Israeli NFL
26:07.102 --> 26:09.970
requirements are not invoked.
26:11.190 --> 26:17.458
It's interesting. At what point, though, do you think
26:17.544 --> 26:20.598
all the technology that NASA pumped in to
26:20.684 --> 26:24.326
the world or to the US. Based on what they were doing? I mean,
26:24.348 --> 26:27.882
not like necessarily that's not military, but you know what I mean. It was stuff
26:27.936 --> 26:31.466
that how it appeared in the normal world
26:31.568 --> 26:34.906
is not military or aeronautic or national security,
26:35.008 --> 26:38.860
but how NASA was using some of that technology clearly was.
26:39.310 --> 26:43.374
So then at what point does obviously like
26:43.412 --> 26:46.462
a typical medical device, whatever,
26:46.516 --> 26:50.490
but like a coding, let's say you create a different coding for something and it's
26:50.570 --> 26:52.800
at the time that you create it is like,
26:53.650 --> 26:57.600
clearly not like you're using it to coat stents or something like that.
26:59.030 --> 27:02.094
So you don't do an NFL because to you it's like, well, it's a coating
27:02.142 --> 27:05.426
for a stent, but then later it's like, well,
27:05.448 --> 27:09.026
this coating now covers
27:09.058 --> 27:12.498
all of our weapons and protects
27:12.514 --> 27:13.400
them from water.
27:16.650 --> 27:20.746
And you should have gotten an NFL because it's I
27:20.768 --> 27:24.326
wonder if the actual art unit
27:24.358 --> 27:27.020
that that gets placed in might dictate that later.
27:27.790 --> 27:31.534
Like if it really wasn't in an art unit that deals with
27:31.572 --> 27:35.422
weaponry and related content and it really
27:35.476 --> 27:37.840
was material science based,
27:38.450 --> 27:41.614
only maybe it's not,
27:41.812 --> 27:44.900
unless you describe it as such in your patent. Right?
27:45.670 --> 27:48.894
Yeah, I don't know. That's a great question. And Kristen,
27:49.022 --> 27:52.174
from what I've seen, only ever seen a few patents
27:52.222 --> 27:56.100
get lagged for this state
27:56.490 --> 28:00.102
military secret. Forget the
28:00.156 --> 28:04.198
words they use in the US. But it
28:04.284 --> 28:07.442
was always when that was explicitly,
28:07.506 --> 28:10.906
at least from what I've seen, was always explicitly listed as an
28:10.928 --> 28:14.890
application, as a military, a stealth technology or something
28:14.960 --> 28:18.662
like that, that was very clearly intended,
28:18.726 --> 28:21.874
I guess is a good word, to be used for those applications.
28:21.942 --> 28:26.890
So when you think about it, there's a lot of materials and textiles
28:26.970 --> 28:30.442
and all kinds of things that military are used in a military
28:30.506 --> 28:33.834
setting, but aren't necessarily like a military invention.
28:33.882 --> 28:37.714
Right. So it does seem like, at least in the US. It's relatively narrow how
28:37.752 --> 28:41.362
they apply that from what I've seen. But it's a great question.
28:41.416 --> 28:44.850
I've often wondered, too, how they how they make that decision.
28:45.750 --> 28:49.266
Yeah. Well, it makes you wonder then, from a you know, we've worked with
28:49.288 --> 28:52.942
companies that are, like, in, like, kind of drone spaces
28:53.006 --> 28:55.266
and, you know, so a lot of times when you draft, you kind of throw
28:55.298 --> 28:56.840
in the kitchen sink. Right.
28:59.630 --> 29:03.610
They're using it for water
29:03.680 --> 29:07.338
recovery of people or whatever. But it
29:07.344 --> 29:10.574
could be used for aerial reconnaissance, could be used for
29:10.612 --> 29:14.570
you. What point are you potentially
29:14.650 --> 29:17.726
putting the application into a category you don't want it
29:17.748 --> 29:21.518
into? Might be one
29:21.524 --> 29:26.910
of those if you have to ask the no or
29:26.980 --> 29:30.642
is in the other category of better
29:30.696 --> 29:33.330
to ask for forgiveness than permission.
29:35.830 --> 29:37.720
I'm not that's a good policy.
29:39.210 --> 29:43.126
No, but here it's probably not. Here do
29:43.148 --> 29:46.438
the conservative thing. But I wonder in the back end
29:46.524 --> 29:50.630
if they would ever allow you to strike through something like that in your spec
29:50.780 --> 29:53.850
in order to get it out of this conundrum.
29:54.190 --> 29:57.546
Yeah, I don't know. That's interesting. Like some kind of spec of my
29:57.568 --> 30:01.434
mental, like the strike through, because you can do in copyright
30:01.482 --> 30:04.734
with code. You can black out stuff that you want
30:04.772 --> 30:07.710
to be not copyright.
30:09.890 --> 30:13.294
I don't know. I can go back to India real quick for you, though.
30:13.332 --> 30:16.786
And this might be something we want to add in post. But unlike in the
30:16.808 --> 30:20.706
US, where a separate form filing license is not required, if filing a
30:20.728 --> 30:24.254
patent application under the Pct with the US Receiving
30:24.302 --> 30:27.494
Office in India, filing a patent application under
30:27.532 --> 30:30.614
the Pct, even with the India Receiving Office,
30:30.732 --> 30:35.042
will still require a separate form filing license prior to filing.
30:35.186 --> 30:38.490
So you still need it prior to filing.
30:39.070 --> 30:42.886
But if you did just a normal Indian patent
30:42.918 --> 30:47.062
application, then you can get that form violent license
30:47.206 --> 30:50.620
to normal US. But if you're going to do an international filing with
30:50.990 --> 30:54.682
the Indian Patent Office, then you need to do NFL separate.
30:54.746 --> 30:58.398
You still need the NFL, but in the US. You do not. So if
30:58.404 --> 31:02.766
somebody wanted to do that from India and File or some
31:02.788 --> 31:06.450
other country, not India, they can bypass the US
31:06.520 --> 31:10.258
foreign filing license by filing a Pct. Okay.
31:10.344 --> 31:13.998
With the USB office. Exactly. But the other way around doesn't
31:14.014 --> 31:17.506
seem to work for all countries anymore. And if you went through
31:17.528 --> 31:20.806
the IB, then what you might have to like, if you
31:20.828 --> 31:24.200
have now I can't remember.
31:24.570 --> 31:28.134
It depends on you can't use the US receiving
31:28.182 --> 31:31.910
Office if the applicant I think it's that the applicant
31:31.990 --> 31:35.062
isn't a US resident.
31:35.126 --> 31:38.694
So if the company resides in India,
31:38.742 --> 31:42.026
even if it had US inventors, I don't think you could use the US receiving
31:42.058 --> 31:46.362
Office. But if the applicant were a US company, and if the inventors
31:46.426 --> 31:50.046
were wherever, then I think you
31:50.068 --> 31:54.126
can use the US receiving Office or something like that, because I know we've run
31:54.148 --> 31:58.030
into that before, where if it's not the company isn't
31:58.110 --> 32:01.122
a US. Company. If you're not filing under a US.
32:01.176 --> 32:05.342
Company, you have to use the IB or some other competent
32:05.406 --> 32:09.302
office. You can't use the US. I mean the US. Receiving Office will
32:09.356 --> 32:12.658
accept it, but then they'll kick it to the IB and send you a notice
32:12.754 --> 32:15.560
saying, shame on you,
32:17.630 --> 32:20.460
you did it wrong. Right? Yeah. Shame on you. Did it wrong.
32:21.150 --> 32:22.460
Not even a company,
32:24.670 --> 32:29.946
but more
32:29.968 --> 32:32.780
questions and answers. Yeah, always.
32:33.550 --> 32:37.178
Process of do
32:37.184 --> 32:41.482
you for China for inventive activity in China, do you submit a packet
32:41.546 --> 32:45.780
like you do for India pre?
32:46.150 --> 32:50.590
Yeah, they call it confidentiality examination,
32:50.750 --> 32:53.970
but it's not really exist in China. I'm kidding.
32:55.290 --> 32:58.770
Confidentializing. Like, we'll take it and steal it and then no, I'm kidding.
32:58.930 --> 33:02.086
I'm kidding. Yeah.
33:02.188 --> 33:04.600
Just another word for FFL, I guess.
33:07.130 --> 33:10.410
But China has other stuff,
33:10.480 --> 33:14.106
right? Remind me, didn't you just go through the
33:14.128 --> 33:17.994
quick rules on China for
33:18.032 --> 33:21.946
having to get the license? I will tell
33:21.968 --> 33:25.306
you. Actually, I have a page in my notes. Okay. I can't
33:25.338 --> 33:28.734
remember I had a supplementary slide, but I actually ended up taking those
33:28.772 --> 33:32.802
out. That's okay. This is why I look it up every time. Because I asked
33:32.856 --> 33:34.980
myself, what was this one again?
33:36.550 --> 33:40.466
And there's what it was called. Administrative Sanctions is the
33:40.488 --> 33:41.970
scary language.
33:45.770 --> 33:48.886
Let's see. So the request for the
33:48.908 --> 33:52.550
NFL in three ways. File separate request
33:52.890 --> 33:56.150
through the CNIPA without or before
33:56.220 --> 33:59.626
filing an app in China. File a
33:59.648 --> 34:02.826
request for a filing license at or after
34:02.928 --> 34:06.586
filing a Chinese app. Filing a Pct app with
34:06.608 --> 34:10.334
the CNN and IPA as a receiving office, I guess,
34:10.372 --> 34:14.640
is the three ways the
34:15.010 --> 34:18.800
prepacket material? I'm sorry?
34:19.250 --> 34:22.606
The three ways where the prepacket material filing directly with
34:22.628 --> 34:26.180
the Cniba or what was the third one?
34:27.990 --> 34:31.714
Filing for a license at the time or after
34:31.912 --> 34:35.650
a Chinese out. Okay. And the other one was filed Pct
34:35.730 --> 34:38.678
with CNIPA as the receiving office. Right.
34:38.764 --> 34:42.166
To avoid the foreign filing license. Is that
34:42.188 --> 34:44.920
right? Yes, I believe. Okay.
34:46.650 --> 34:49.880
Administrative Sanctions. I think you can use that on your children.
34:53.210 --> 34:56.362
I don't know if it's the Chinese administrative sanctions. I don't know.
34:56.416 --> 34:59.226
It might be kind of unkind. I don't know. No,
34:59.328 --> 35:02.734
you can change them. Whatever you want. Just call them
35:02.772 --> 35:03.360
that.
35:07.970 --> 35:11.226
That's funny. No juice box. That's an administrative
35:11.258 --> 35:11.950
sanction.
35:15.490 --> 35:19.002
Yeah. I guess I kind of to
35:19.076 --> 35:22.306
boil all this down, just brought it into kind of two
35:22.328 --> 35:26.246
summaries. What I was kind of thinking as
35:26.348 --> 35:29.334
takeaways for the practitioner is the who, where,
35:29.372 --> 35:32.710
what, gathering that data
35:32.780 --> 35:35.430
to formulate your strategy.
35:35.770 --> 35:39.720
And then what I've seen several times in some of the references was
35:40.090 --> 35:43.274
if you're a little unsure and working
35:43.312 --> 35:46.826
with two or more countries, it's typically best to start from
35:46.848 --> 35:50.234
the stricter alleviating those
35:50.272 --> 35:54.846
issues and work towards the more lenient. So I
35:54.868 --> 35:58.254
would imagine if you're dealing with stricter country, it'd probably be best
35:58.372 --> 36:01.774
to go the route to filing a patent through them first.
36:01.892 --> 36:05.666
Getting the FFL from somebody. Else. It's just
36:05.688 --> 36:09.534
what I had kind of seen, and then yeah, I've repeatedly
36:09.582 --> 36:13.314
seen it's best to always refer to an associate for
36:13.352 --> 36:16.354
each subject country. It is.
36:16.392 --> 36:19.654
And the worst case of this, if you have three
36:19.692 --> 36:23.090
or four countries involved in this and you cannot
36:23.170 --> 36:26.642
resolve it, you can figure out a way to split
36:26.706 --> 36:30.730
claims and file two separate three separate. That's a good idea.
36:30.880 --> 36:34.970
It's expensive, but often certain
36:35.040 --> 36:38.554
claims don't have all inventors on it, and some do,
36:38.592 --> 36:41.934
some don't. It's another way to get around
36:41.972 --> 36:45.646
it, albeit expensive, because you have multiple applications and you're paying
36:45.668 --> 36:47.950
your practitioner to divide the conquer.
36:49.410 --> 36:50.960
Yeah, I didn't want that.
36:52.210 --> 36:55.454
Yes. And then I guess, my last slide,
36:55.502 --> 36:58.706
just kind of looking at all this through
36:58.888 --> 37:02.434
the business lens, some considerations that
37:02.472 --> 37:03.940
I was just kind of thinking through.
37:05.450 --> 37:08.040
Where are you going to base your R and D out of?
37:08.650 --> 37:12.866
If you're really a big considerance
37:12.898 --> 37:16.306
is timelines, especially on your intellectual
37:16.338 --> 37:20.870
property development. Just like we mentioned with India,
37:21.030 --> 37:25.158
some of those that can add to your filing.
37:25.334 --> 37:28.682
If you desire to file in the US first, I mean, you can be
37:28.816 --> 37:32.234
adding weeks to your filing dates, so that
37:32.272 --> 37:36.250
might be a consideration for R and D or engineering.
37:37.070 --> 37:40.574
So for India, often what I'll do is I'll write kind of
37:40.612 --> 37:43.978
a sub claim center. I'll just do the system or the method,
37:44.154 --> 37:47.858
and then I will quickly put together maybe a flow chart or a
37:47.864 --> 37:51.234
few paragraphs on that and then add boilerplate to that and
37:51.272 --> 37:54.994
submit that as a packet rather than the entire thing.
37:55.192 --> 37:58.818
If I have figures, I will maybe give them a preliminary figure deck
37:58.834 --> 38:02.694
of everything so that's a little more inclusive. And I
38:02.732 --> 38:06.200
have gotten born and final licenses off of that.
38:06.570 --> 38:09.130
When I've submitted a paragraph and a claim,
38:10.110 --> 38:13.580
it's worked once, and I've been denied three times.
38:15.470 --> 38:18.380
You do need a little more than that. Very interesting.
38:19.970 --> 38:24.080
I feel like this deserves a cool
38:24.770 --> 38:27.966
software thing where you
38:27.988 --> 38:31.214
could put in all the who, what,
38:31.252 --> 38:34.574
when, where, why, whatever, all the fact
38:34.612 --> 38:39.022
pattern. Like, here's my inventor fact pattern. And then it spits
38:39.086 --> 38:43.182
out the strategy.
38:43.326 --> 38:46.958
Yeah, or not even the strategy, but here's
38:46.974 --> 38:51.234
the strictest country based on this inventor, and then
38:51.352 --> 38:54.130
hold whatever you still want to verify.
38:54.210 --> 38:57.666
Right, of course. And then here's more lenient countries.
38:57.858 --> 39:01.158
So here's the tiered of complexities that you're dealing
39:01.174 --> 39:04.854
with. Kind of puts that back pattern into a digestible
39:04.902 --> 39:07.740
thing that you can then act upon. Right.
39:08.190 --> 39:11.754
I feel like there's some interesting software thing
39:11.792 --> 39:15.166
there. Yeah, it could be. But I always learn something when I do
39:15.188 --> 39:18.766
this, when I look something up, always, I'm like,
39:18.788 --> 39:22.160
oh, I didn't know that, or, I forgot I knew that. Right.
39:24.710 --> 39:28.046
I always do the weirdest one I've
39:28.078 --> 39:32.162
ever filed in. And it's not an obscure country by
39:32.216 --> 39:35.794
any means, but it is to have a US inventor filing
39:35.842 --> 39:40.690
in Russia or a Russian inventor filing
39:40.770 --> 39:44.594
in the US. But needing to file in Russia first. That's the inventive
39:44.642 --> 39:47.880
activity, right? Russia's inventive activity, yeah.
39:48.410 --> 39:51.558
So it's so weird because it's not just kind of the laws
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that apply, but it's what they ask for and they want like your
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patronymic name and
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that happens to be like your last name with your father's
40:04.122 --> 40:07.566
last name on the beginning of it. And you have
40:07.588 --> 40:11.294
to know what all of these things are. It's peculiar, but just
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not our culture and it's not what we do over here. Right.
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The question, because certain countries used to be part
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of the USSR, like Ukraine actually,
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I know some companies that use have been using developers in Ukraine.
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Does Ukraine have any interesting rules
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because they kind of were once apart of Russia
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or the USSR.
40:37.370 --> 40:40.778
Things break apart. I don't even know if Ukraine has a decent patent system.
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You know what I mean? I was
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curious what notes I had on the table
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about Ukraine.
40:52.510 --> 40:55.870
Well, I don't yeah, I don't think there is a Ukraine listed.
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I'll have to look into that and add to it.
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Yeah, the magnitude would be a significant patent system, you know what I mean?
41:03.732 --> 41:07.330
I just sort of think about all the countries that kind of broken apart.
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Do they have a patented system still? And is it the patent system that's largely
41:12.078 --> 41:15.206
from the parent, the country that they broke apart from? Or do they create their
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own weird stuff?
41:19.850 --> 41:23.746
A guide to patenting in Belarus, Ukraine, Georgia and Kazakhstan.
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Well, there you go. I'll send that around.
41:29.470 --> 41:34.460
Belarus is a real hot country for technology.
41:35.790 --> 41:39.810
What they are saying is they are definitely developing markets
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with improving, evolving patent systems. So they're
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coming along, courts have been reformed and they are improving.
41:47.738 --> 41:51.518
So it could be something, could be the
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brick countries of the future.
41:54.770 --> 41:58.210
Yeah, who knows? All right, awesome.
41:58.360 --> 42:02.014
Well, thanks Ty. All right, that's all for today folks.
42:02.062 --> 42:05.874
Thanks for listening and remember to check us out@aurorapatants.com for more great
42:05.912 --> 42:09.518
podcasts, blogs, and videos covering all things patent strategy.
42:09.614 --> 42:12.006
And if you're an agent or attorney and would like to be part of the
42:12.028 --> 42:14.978
discussion or an inventor with a topic you'd like to hear discussed,
42:15.074 --> 42:18.710
email us at podcast@aurorapatants.com. Do remember
42:18.780 --> 42:22.434
that this podcast does not constitute legal advice. And until next time, keep calm
42:22.482 --> 42:23.140
and patent on.