The Israeli Approach to Foreign Filing Licenses
by Jeremy M. Ben-David, Managing Partner, JMB Davis Ben-David
In a recent decision of the Chinese Patent Re-Examination Board, a Chinese patent for an invention made in China was invalidated due to the Chinese patent holder filing a corresponding patent application outside of China, without first having obtained a foreign filing license (hereon “FFL”). The decision was based clearly on current Chinese Law, and is apparently the first decision of its kind in China.
An instant, almost knee jerk reaction to this decision could be that it is yet one more example of the Big Brother State inserting itself into places where it’s not wanted. However, you would then have to say the same things about the US, or India (the largest democracy in the world), or various European countries, among others.
Without going into the specifics of the Chinese decision, it did remind me of a question that we were asked a number of years ago.
The question involved a hypothetical situation in which an invention was made jointly by Israeli and American engineers. Specifically, we were asked, “what would be required to obtain an Israeli FFL so that a patent application for the invention could be filed in the United States?” When considering this question, it should be borne in mind that a FFL is required in order to file an overseas patent application for any invention made in the United States (see, inter alia, CHAPTER 17, MPEP – Secrecy Of Certain Inventions And Filing Applications In Foreign Countries); and in the situation described, the invention had been made at least partially, in the United States.
As with many questions, the answer is not so simple. The short (and very partial) answer is that the Israel Patent Law has no overarching requirement to obtain a foreign license.
However, in the same way that an absence of evidence is not evidence of absence, the mere fact that there is no general requirement to obtain a FFL, does not mean that foreign filing is necessarily permitted in all cases. In fact, the Israel Patent Law clearly states that “an Israeli citizen, a permanent resident of Israel, or another person who owes allegiance to the state” is prohibited from filing patent applications overseas if the invention falls within certain fields, such as defense, nuclear energy and the like, or if the inventor was an employee of the State at the time of invention. One exception to this prohibition is if the inventor receives permission from the State, for example, from the office of the Defense Minister (in the case of a defense related invention). As a very practical alternative to actively requesting permission, a patent application can be filed in the Israel Patent Office, and if no order has been issued forbidding foreign filing after a “cooling off” period of typically six months, then the inventor is in the clear and can file overseas.
Great, you might think. So as long as the invention doesn’t fall into one of the problematic fields (i.e. in a field which does require permission), then the obvious solution would be to file a first application in the USPTO. And if it does fall in a problematic area, well then, you have to ask what in Hebrew is known as a “sheelat kitbag” (there’s no easy translation for that phrase, but the closest explanation is that “if you have to ask, then the answer is no”). In other words, you should ask the office of the Defense Minister. However, in this situation, you might be prohibited from asking such a question under US law, unless you were first to obtain permission from the authorities in the US.
But what about dual usage technologies? What about certain types of software, or vehicle or drone technology which could have security uses, even though they haven’t been invented for that purpose?
My normal advice to an Israeli inventor is that rather than ask the question, first file a patent application in the ILPTO, and after six months, in the absence of an order prohibiting filing overseas, file overseas.
But for arguably dual purpose technologies, is this strictly necessary in all cases? How far do you have to go? Just because a radical group has an online movie showing how to turn fertilizer into explosives, does that automatically mean that an improvement thereof is defense related? Or if certain types of bottles when used as Molotov Cocktails are more destructive than others, does that mean that those bottles cannot be the subject of a patent or design application overseas, when in fact the new bottle is actually the latest design of a beverage company for its new line of flavors?
The above examples may be somewhat of an exaggeration, and most reasonable people would say that the question should be approached with reason, and with a cool head.
In a way, the situation in China and the US, as well as in many other jurisdictions that have a blanket requirement for filing overseas seems simpler. However, and despite the fact that the law in Israel seems to complicate the situation, it’s actually an example of where the Israeli legislator has held back from a draconian, blanket requirement.
In my opinion, the current state of this law in Israel is definitely a win for a reasoned approach; not applying legal restrictions where they may not be strictly necessary. And if questions do come up, a cool-headed, reasoned approach is always desirable.
And as we move into the heat of summer… my advice is definitely in keeping with the above… stay cool!