Foreign Filing Licenses: Key Considerations, First Filing Requirements, Design Patent Unique Issues, Export Controls

Recording of a 90-minute premium CLE video webinar with Q&A

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Conducted on Tuesday, April 26, 2022

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Course Materials

This CLE course will guide patent counsel on foreign filing restrictions and licenses. It will also review the export controls considerations and pitfalls in that process. The panel will discuss various countries with filing restrictions and requirements, including the U.S., China, India, Germany, and other countries. The panel will address unique issues that design patent applications face. The panel will also offer best practices for avoiding foreign filing mistakes.

Description

Many international companies and universities routinely conduct inventive activities in various countries by inventors of varied citizenships. Numerous countries, including the U.S. and China, have some level of foreign filing license requirements.

At the same time, however, many governments require approval before certain types of technology can be exported abroad. Violations of these export control laws, even if inadvertent, can expose parties to severe penalties. It is important for patent counsel to understand the intersection with export control law.

Further, although the requirements are the same, there are some unique aspects of foreign filing licenses for design patent applications.

If these companies, universities, and their counsel fail to comply with each country's foreign filing requirements they could suffer significant consequences, including the ability to obtain patent protection for the invention in those countries.

Listen as our authoritative panel of patent and export control attorneys examines foreign filing restrictions and licenses. The panel will discuss various countries with filing restrictions and requirements, focusing on the U.S., China, India, Germany, the UK, and other countries. The panel will address unique issues that design patent applications face and export control issues that both utility and design patents must consider. The panel will offer best practices for avoiding foreign filing mistakes and export control violations.

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Outline

  1. Foreign filing restrictions and requirements
    1. Overview
    2. Specific countries
      1. U.S.
      2. China
      3. India
      4. Other countries
  2. Design patent unique issues
  3. Export controls
  4. Best practices for avoiding foreign filing mistakes

Benefits

The panel will review these and other key issues:

  • What are foreign filing restrictions and licenses?
  • What rights does a foreign filing license provide?
  • What constitutes "developed in China"? What are the consequences of failing to understand when a license is required for China?

Faculty

Durkin, Tracy-Gene
Tracy-Gene Durkin

Director
Sterne Kessler Goldstein & Fox

Ms. Durkin heads the firm’s Mechanical and Design Patent Group. With nearly 30 years of experience obtaining...  |  Read More

Jeydel, Peter
Peter Jeydel

Of Counsel
Steptoe & Johnson

Mr. Jeydel focuses his practice on US export controls and economic sanctions, including counseling, compliance,...  |  Read More

Mueller, Lisa
Lisa L. Mueller, J.D., B.S.

Shareholder
Casimir Jones

For over 25 years, Ms. Mueller has provided strategic counsel on complex patent issues to clients in the...  |  Read More

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