License to File: Foreign Filing License Risks and Strategies

​​Patently Strategic - Patent Strategy for Startups

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Foreign filing licenses – surprisingly sneaky and easy to overlook, but can come with significant consequences if you do. Many countries, including the US, require inventors to receive special permission to file with patent offices outside of the inventor’s …or invention’s… country. A foreign filing license is a government issued document that represents this permission for inventors and companies to file in foreign countries. Failing to receive this permission can come with serious ramifications including fines, patent revocation, and even imprisonment!
Why so serious? Well, like with most matters of foreign export compliance, it comes down to each nation’s strong desire to protect its own security and economic interests. Allowing ideas to cross borders comes with the risk of the unauthorized exportation of technologies and sensitive information that could have implications for military applications, national security, and state secrets.
In this month’s episode, we're bringing you along for a tale of international mystery and intrigue and into the clandestine world of foreign filing licenses. Ty Davis, Patent Strategy Associate at Aurora, along with our all star patent panel, discusses:
⦿ The three main categories of filing license requirements
⦿ Strategies for data collection and how to navigate potential conflicts
⦿ And some example walkthroughs of international filing conflicts and their resolutions
Ty is joined by our always exceptional group of IP experts, including:
⦿ Ashley Sloat, President and Director of Patent Strategy at Aurora
⦿ Kristen Hansen, Patent Strategist at Aurora
⦿ David Jackrel, President of Jackrel Consulting
** Aurora is Hiring! **
Join us in the trenches and on this podcast! Aurora is looking for a part-time Biotech Patent Agent to help with patent portfolio management, application drafting, prosecution, and strategy. This is a salaried, fully remote position with a flexible work week and benefits. Work where you want, when you want, with a great team, on engaging subject matter, and even get the opportunity to be heard on this Podcast and featured on IPWatchdog! Learn more and apply at https://www.aurorapatents.com/careers.html.
** Resources **
⦿ Show Notes: https://www.aurorapatents.com/blog/license-to-file
⦿ Slides: https://www.aurorapatents.com/uploads/9/8/1/1/98119826/foreignfilinglicenses.pdf
⦿ FFL Table: https://www.aurorapatents.com/foreign-filing-license-requirements.html
⦿ Apply: https://www.aurorapatents.com/careers.html
** Follow Aurora Consulting **
⦿ Home: https://www.aurorapatents.com/
⦿ Twitter: https://twitter.com/AuroraPatents
⦿ LinkedIn: https://www.linkedin.com/company/aurora-cg/
⦿ Facebook: https://www.facebook.com/aurorapatents/
⦿ Instagram: https://www.instagram.com/aurorapatents/

And as

Chapters

1. Intro (00:00:00)

2. What are foreign filing licenses? (00:05:23)

3. Three categories of foreign filing license countries (00:06:25)

4. Data collection strategies (00:08:07)

5. Consequences of getting it wrong (00:09:48)

6. Potential conflicts (00:15:38)

7. Example conflicts and resolutions (00:16:35)

8. Key takeaways (00:35:23)

9. Outro (00:42:00)