Who files first? Managing foreign filing license rules in global patent collaborations

In summary

When R&D is conducted entirely within one jurisdiction, compliance is usually straightforward. In cross‑border projects, however, multiple and sometimes conflicting compliance rules can be triggered at once. In a recent example, the author encountered a situation where a US‑based inventor and Portuguese‑based inventor collaborated on a new technology. What started off as a routine filing patent quickly spiraled into a sequencing nightmare. The United States requires a foreign filing license for inventions made on its soil, while Portugal operates a de facto national‑first system for its’ residents. Who files first?

This article explains the main types of foreign filing licenses and first‑filing rules. It outlines the consequences of non‑compliance and then uses the US–Portugal combination as a case study to illustrate practical filing strategies for global patent teams.

Discussion points

  • Three main models: “made‑here”, “resident‑here” and “sensitive‑subject‑matter” regimes
  • How conflicts arise when multiple countries can each claim to be the “first filing” forum
  • The particular challenges of combining US and Portuguese inventors on a single patent family
  • Practical filing sequences and governance steps to reduce risk in cross‑border projects

Introduction

Foreign filing license rules are an older legal mechanism that has become newly important in an era of globalized R&D and national security rules. In essence, they are export‑control checkpoints embedded in patent law: if an invention has a sufficient territorial or personal link to a country, that country may require permission before the invention can be disclosed in a foreign patent office.

The United States is the best‑known example. Under 35 USC 184, an application for an invention “made in this country” may not be filed abroad until six months after it is filed in the USPTO, unless a foreign filing license is granted earlier. Many other jurisdictions employ functionally similar tools, even if they are not always labelled as a “foreign filing license”. For companies used to filing first where it is commercially convenient, these rules can come as an unwelcome surprise, particularly when multiple countries assert overlapping claims to control the first filing.​

Typologies of foreign filing and first‑filing regimes

Although the details vary, most systems fall into one or more of three broad categories.

Figure 1. Common foreign filing and first‑filing approaches

Type of regime

Trigger

Illustrative examples*

Typical mechanism

“Made‑here” regimes

Place where the invention was made or completed

United States, China, Japan (for specified tech)

License or security review required before first foreign filing

“Resident‑here” regimes

Residence or establishment of inventor/applicant

India, UK, France, Portugal, several others

Residents must file first at home or obtain prior permission

Sensitive subject‑matter

Defense or state‑secret technologies, often resident‑linked

Germany, UK, France, Korea

Secrecy directions or special clearance before any foreign filing

*Examples are illustrative, not exhaustive.

The policy logic can be seen clearly in the United States. The Invention Secrecy Act of 1951, now codified in 35 USC §§181–188, authorizes the government to impose secrecy orders on applications deemed sensitive and, through §184, to control when such inventions may be filed abroad. China’s confidentiality examination for inventions completed there serves a similar purpose, requiring prior review before a foreign filing is made. India’s section 39, by contrast, focuses on residence: anyone resident in India must either file first in India or obtain a written foreign filing permit before filing elsewhere.

Portugal is frequently cited by practitioners as a national‑first jurisdiction. Applicants with a corporate office or residence in Portugal are expected, under the Industrial Property Code and related practice, to route certain first filings through the Portuguese office, particularly where European patent applications are concerned. Unlike the United States, there does not appear to be a widely used procedure under which Portugal grants foreign filing licenses to bypass this requirement.

Consequences of non‑compliance

The legal and practical sanctions for failing to observe these rules differ significantly by jurisdiction.

Figure 2. Selected consequences for violating foreign filing / first‑filing rules

Jurisdiction

Primary trigger

Main legal consequence(s)

United States

Invention made in the US; no license before foreign first filing

Patent may be held invalid under 35 USC 185; criminal penalties possible for willful violations, especially if a secrecy order is involved; retroactive license can sometimes cure errors

China

Invention or utility model completed in China; no confidentiality examination

Rejection of application or later invalidation for lack of required secrecy review

India

Resident files abroad without section 39 permit or prior Indian filing

Application may be treated as abandoned; criminal penalties under section 118 are possible

Portugal

Resident / locally established applicant files first abroad without INPI filing

Risk that later Portuguese or EP‑PT rights are denied or challenged for non‑compliance with national‑first expectations

For global portfolios, these effects can be disproportionate. A procedural misstep driven by deadline pressure in one country can later be weaponized to attack the validity of a key patent in another. The availability of retroactive cures is also uneven: the USPTO can, in appropriate circumstances, grant a retroactive foreign filing license, but comparable mechanisms do not generally exist in China or India.

Case study: US–Portugal joint inventors

When an invention has both US‑based and Portuguese‑based inventors, two different systems are likely to be engaged creating a bit of a quandary.

On the US side, any invention “made in this country” triggers 35 USC 184. If the first filing will be abroad, the applicant must either wait six months after a US filing or obtain a foreign filing license in advance. That license can be secured either implicitly through a US filing (the filing receipt normally states whether foreign filing is authorized) or explicitly through a standalone petition with a copy of the draft application. The normal US procedure of filing first and receiving a near automatic foreign filing license approval on the filing receipt is out of question given Portugal’s rules.

On the Portuguese side, the Industrial Property Code (IPC) and national practice require applicants having their residence or principal place of business in Portugal to file certain patent applications, notably, European patent applications through the Portuguese office unless they claim priority from an earlier Portuguese filing.

As a result, a US–Portugal collaboration can quickly encounter a sequencing dilemma:

  • Filing first in Portugal without a US license risks violating §184 if any inventive activity occurred in the United States.
  • Filing first in the United States may satisfy US law but leaves open the argument that Portuguese national‑first rules were not respected for resident inventors or locally based applicants.

There is no universal conflict‑of‑laws rule that resolves this nor any quick work-arounds. Instead, counsel must design a filing sequence that minimizes risk in both systems.

A common sequence includes:

  • Request a US foreign filing license first, then file the patent in Portugal:
    • Obtain an expedited US foreign filing license only on the full draft patent application before any official US patent filing. The USPTO claims to turn these around in a few business days.
    • Once the US foreign filing license is approved, file first through INPI (national or PCT/INPI as receiving office).
    • Within 12 months, file in the United States and elsewhere, claiming priority from the Portuguese filing under the Paris Convention or within the relevant time window for a PCT application (~30 months from first filing).

Note that reverse strategy of requesting a license from Portugal first is likely to fail as INPI is not known to grant these easily and especially not for US first filings.

A practical playbook for cross‑border teams

To manage these issues proactively, global patent teams can adopt a simple governance framework:

  • Map connections early
    • Record, for each new invention, where each inventive act took place and where each inventor currently resides.
    • Record where each proposed applicant entity is incorporated and effectively managed.
  • Identify all potentially applicable regimes
    • Apply a “made‑here” lens (United States, China and similar) and a “resident‑here” lens (India, Portugal and others) before any first filing.
  • Classify countries by flexibility
    • Separate countries that offer formal foreign filing licenses or secrecy examinations (for example, United States, China, India) from those that are effectively national‑first with few or no exceptions.
  • Sequence accordingly
    • Seek licenses from the more flexible states first (e.g. USPTO), before any foreign filing.
    • For rigid national‑first states that matter commercially, plan to route at least one early filing through the national office or via a PCT in which it is the receiving office.
  • Document the reasoning
    • Keep internal notes showing how triggers were analyzed and why a particular sequence was chosen. This can be invaluable if foreign filing license issues arise in later litigation.

Conclusion

Foreign filing and first‑filing rules were not designed with distributed cloud‑based R&D teams in mind, yet they now apply squarely to those teams. The combination of “made‑here” and “resident‑here” regimes means that multi‑national inventor sets — such as US and Portuguese engineers collaborating on a single invention can find themselves facing conflicting expectations about where to file first and when they may disclose their invention abroad.

While there is no one‑size‑fits‑all answer, early issue‑spotting, careful mapping of connections and deliberate sequencing of petitions and filings can significantly reduce risk. In an environment where export control, national security policy and intellectual property strategy are increasingly intertwined, treating foreign filing licenses as a core design parameter of global patent strategy has become essential rather than optional.