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[dkhoo]

A client of mine would like to file a US patent application in the EU.  We plan on filing once we receive the license for international filing from the USPTO or after waiting 6 months.  My client would also like to add new subject matter to the application that we file in the EU.  My question is, since the invention was invented in the US, are we allowed to add that new subject matter for the EU application or do we need consent from the USPTO?  Or for that matter, if I had a client who invented something in the US, can they file for a patent application internationally and not in the US?  Or do you still need to get some form of consent from the USPTO?

[klaviernista]

MPEP 140 directly addresses the issue.  It states, inter alia:

"140 Foreign Filing Licenses . . .

35 U.S.C. 184 Filing of application in foreign country.

Except when authorized by a license obtained from the Commissioner of Patents a person shall not file or cause or authorize to be filed in any foreign country prior to six months after filing in the United States an application for patent or for the registration of a utility model, industrial design, or model in respect of an invention made in this country. A license shall not be granted with respect to an invention subject to an order issued by the Commissioner of Patents pursuant to section 181 of this title without the concurrence of the head of the departments and the chief officers of the agencies who caused the order to be issued. The license may be granted retroactively where an application has been filed abroad through error and without deceptive intent and the application does not disclose an invention within the scope of section 181 of this title.

The term "application" when used in this chapter includes applications and any modifications, amendments, or supplements thereto, or divisions thereof.

The scope of a license shall permit subsequent modifications, amendments, and supplements containing additional subject matter if the application upon which the request for the license is based is not, or was not, required to be made available for inspection under section 181 of this title and if such modifications, amendments, and supplements do not change the general nature of the invention in a manner which would require such application to be made available for inspection under such section 181. In any case in which a license is not, or was not, required in order to file an application in any foreign country, such subsequent modifications, amendments, and supplements may be made, without a license, to the application filed in the foreign country if the United States application was not required to be made available for inspection under section 181 and if such modifications, amendments, and supplements do not, or did not, change the general nature of the invention in a manner which would require the United States application to have been made available for inspection under such section 181. . . ."

[dkhoo]

Thank you!  That last paragraph was exactly what I was looking for.  So it looks like once I get a foreign filing license, I'll be allowed to add new subject matter so as long as it doesn't change the general nature of the invention to cause a security risk (which it doesn't).

Not that this matters for my client, but I'm still curious about my other question.  If I invent something in the US, can I file for a patent application for that invention in a foreign country, WITHOUT filing in the US?  If so, do I need to get some sort of clearance from the US gov?

[klaviernista]

"My question is, since the invention was invented in the US, are we allowed to add that new subject matter for the EU application or do we need consent from the USPTO?  Or for that matter, if I had a client who invented something in the US, can they file for a patent application internationally and not in the US?  Or do you still need to get some form of consent from the USPTO?"

Since the technology in question was invented in the U.S., you will need to obtain authorization from the U.S. government (in the form of a foreign filing license), before filing abroad.  I have not done it personally, but I believe it is possible to obtain a foreign filing license from the USPTO without filing a U.S. Application.

There are several possible consequences for filing a foreign patent application drawn to a U.S. developed technology without a foreign filing license.  For example, as MPEP 140 explains that the inventors may be barred from obtaining patent protection for that technology in the U.S., if they file abroad without a license.  Another, more serious copnsequence is that the inventors AND attorneys could be charged with the unlawful exportation of technological information from the U.S., in violation of U.S. Customs provisions.

[dkhoo]

OK, good to know.  Thanks for the info.