Is your patent filing strategy legal? It may surprise some people to know that governments place restrictions on where patent applications can be filed.
It is perhaps less of a surprise if this is explained in relation to restrictions on handling of potentially sensitive technologies, e.g. for inventions of interest to the defence industry and/or in otherwise dangerous areas such as nuclear.
However, in some countries the restrictions apply to any new invention. Companies must take responsibility for keeping their actions in line with the law, including compliance with national security provisions that may influence a patent filing strategy. If in doubt, then of course you should seek expert advice.
There are two key questions to address, first which country’s laws apply, and second what the restrictions are and/or what actions are needed to be sure of compliance.
To determine what country’s laws applies it may be necessary to know all of the following:
- the location where the invention was made
- the nationality and residence of the inventor(s), and
- the nationality and residence of the owner(s)/patent applicant(s) (who may be the employer(s) of the inventor(s).
If the answers to all of questions are a single country, then clearly only that country’s laws apply. If multiple countries are involved, then the situation may be complicated, and it is recommended that you seek advice from a patent attorney or other specialist legal advisor.
Territorial scope of Norway’s defence-related invention regulations
In Norway the Act on Inventions of Importance to Defence sets special requirements for handling of inventions in specific areas of technology when those inventions are made in Norway. Thus, the law would not apply to a Norwegian citizen who was working overseas when the invention was made.
There are related Regulations for implementing the Act, and these Regulations set out a listing of categories of materials where the Act applies. The focus is on inventions of relevance for defence/military use.
This listing includes technology areas that one would clearly expect to be present, such as weapons and weaponizable materials/technology. In addition, the list includes some more surprising areas of technology. For example, the restrictions can apply to various types of vehicles not only in relation to aviation and dedicated military vehicles, but also for more general types of road and maritime vehicles.
In addition, there are quite general references to areas like navigation systems, communications and construction machinery. If you work within these technology areas, then new technical innovations can be subject to restrictions if they are especially suitable for or intended for use by the military.
- Read more: Patentstyret (Norwegian Industrial Property Office) guide on Inventions of Importance to Defence
- Read more: Act on Inventions of Importance to Defence of the Realm
- Read more: Regulations on the handling of cases under the Act
There is of course some room for interpretation, but it would naturally be advisable to be cautious in your approach and seek advice from a Norwegian patent firm in case of any uncertainty.
If your invention has implications for Norway’s national security — for example, if it involves any of the listed sensitive technologies — you must be aware of specific legal restrictions that apply.
A patent application for an invention of significance to defence of the realm should be first filed in Norway and this must be done following specific procedures. If for some reason you wish to file the first patent application outside of Norway, e.g. in the US or elsewhere overseas, then you must contact the Norwegian National Security Authority (NSM) well in advance before any overseas patent application is filed.
There are also restrictions in Norway for such inventions even if your IP strategy does not require a patent application to be filed. In that case you must contact the NSM prior to any publication or use of the invention.
International variations in national security filing requirements with defence technology
Most jurisdictions have some form of similar restriction, generally for the purpose of protecting national security. However, the implementation of these so called “foreign filing” restrictions varies greatly.
In the United States, foreign filing restrictions apply irrespective of the nature of the technology. Any invention made in the US must either be filed first with the United States Patent and Trademark Office (USPTO) or be accompanied by a foreign filing license.
In the United Kingdom, the approach is broadly aligned with Norway’s. Restrictions on foreign filings apply only to inventions involving specific categories of sensitive technology.
However, the United Kingdom list of technologies, though overlapping with the Norwegian list, is rather more detailed. It also, perhaps amusingly, includes technology areas of such sensitivity that redactions in the publicly available list means we are not told exactly what these technologies are!
- Read more: UK list of technology relevant to national security.
- Read more: USPTO guidance on foreign filing licenses
Other European countries have restrictions based on one or more of inventor residence (e.g. Spain), inventor nationality (e.g. Greece), applicant nationality (e.g. France, Italy) and/or the technology area involved.
If you are collaborating with companies/inventors in various countries, then it is important to investigate what restrictions apply. This should be done before any patent applications are filed.
You should also be mindful that with modern working practices it is becoming commonplace for inventions to be made jointly by inventors who are in remote locations, including in different overseas locations. This creates some interesting situations where the patent attorney must find a way to satisfy two sets of restrictions at once, such as by obtaining a foreign filing license from a first jurisdiction before then first filing a patent application in a second jurisdiction.
Conclusion and legal guidance across jurisdictions
Navigating the legal framework surrounding the protection of inventions can be challenging, particularly when multiple jurisdictions are involved. However, guidance is available from governments and from patent offices, and where there is any risk/doubt then you should naturally seek expert legal advice: in this situation from a patent attorney firm with expertise in the jurisdiction(s) that are involved.
