PA 06/2014: The need to take into account national security provisions when filing an international application 

WARNING: Although the information which follows was correct at the time of original publication in the PCT Newsletter, some information may no longer be applicable; for example, amendments may have been made to the PCT Regulations and Administrative Instructions, as well as to PCT Forms, since the PCT Newsletter concerned was published; changes to certain fees and references to certain publications may no longer be valid. Wherever there is a reference to a PCT Rule, please check carefully whether the Rule in force at the date of publication of the advice has since been amended.

Q: I would like to file an international application using ePCT-Filing, however, the applicant’s usual national receiving Office does not accept such filings yet. I am therefore considering filing the application with the receiving Office of the International Bureau (RO/IB), as the RO/IB does accept ePCT-Filings and is competent to receive international applications from residents and/or nationals of any PCT Contracting State. However, please could you tell me whether there could be national security issues if I do not file the application at the national Office?

A: Filing with the International Bureau as receiving Office (RO/IB) (or with a regional patent Office) does not eliminate the need to consider prescriptions relating to national security. If you do file directly with the RO/IB, compliance with any national security prescriptions applicable under national law will not be checked by the RO/IB and it remains your responsibility, as applicant, to ensure that you have complied with any such prescriptions before you file. Similar restrictions also apply in respect of certain member States of regional patent organizations, for example when filing an international application with the European Patent Office.

The requirements of these prescriptions vary – some countries have restrictions on all foreign filings for national security reasons, that is, government permission needs to be sought in order to file outside the country where the invention was made, or outside the country of which the applicant is a resident and/or national, depending on the national law concerned. However, some countries have restrictions only where the invention relates to a particular technical field.

Any such restrictions are permissible under the PCT as PCT Article 27(8) states:

“Nothing in this Treaty and the Regulations is intended to be construed as limiting the freedom of any Contracting State to apply measures deemed necessary for the preservation of its national security or to limit, for the protection of the general economic interests of that State, the right of its own residents or nationals to file international applications.”

When filing with a national Office as PCT receiving Office, therefore, that Office has the right to delay transmittal of the international application to the IB and the International Searching Authority while it considers whether any national provisions relating to national security may apply and if so, whether national security clearance should be granted (PCT Rule 22.1(a)). If it considers that national security clearance should not be given, it can then declare that the application will not be treated as an international application, and will issue form PCT/RO/147 (Notification Concerning Failure to Forward Record Copy and Search Copy for National Security Reasons).

You do not say whether you have already filed an earlier application with your national Office. In many cases, where an earlier national application has already been filed with the applicant’s national Office, and the subject matter of your subsequent application is identical to that of the earlier application, any necessary national security checks will normally already have been carried out, and the applicant may therefore have already received any necessary clearance from the government concerned to file a later application elsewhere. For example, if your invention was made in the United States of America and you had filed an earlier application in that country more than six months ago, and no secrecy order has been subsequently issued, you would have the right to file a later application in another country (although it may be possible to file the later application earlier than after those six months where authorized by a license obtained from the Commissioner of Patents (see the USPTO’s Manual of Patent Examining Procedure § 140 “Foreign Filing Licenses” at: http://www.uspto.gov/web/offices/pac/mpep/s140.html)).

In conclusion, if you are subject, because of your nationality, residence or the nature of your invention, to national security provisions and you do not already possess any national security clearance for your invention, you should contact your national receiving Office before you file an international application with the RO/IB.

Where national Offices have notified the IB of any foreign filing restrictions which apply, for reasons of national security, to PCT applications which are to be filed at an Office other than the national Office concerned, that information can be found in the PCT Applicant’s Guide, Annex B1 (Information on Contracting States), as a footnote to the listing of competent receiving Offices, by clicking on the link to the Office concerned at:

http://www.wipo.int/pct/en/appguide/ 

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