Over the last generation research and development has become truly global. Scientists in London are collaborating in the course of a single business day with counterparts in Guanzhou, Bangalore, Stuttgart, Sao Paulo and Sunnyvale. Together these scientists generate brilliant new ideas that lead to wonderful new products and services and, of course, patent filings—in at least some of the countries in which collaboration is taking place and frequently in many other countries. And that is where the neat modern system of global R&D ceases to be neat, modern or global. At the intersection of patent and national security law there is a conundrum affecting anyone relying on global research and development: where to file an initial patent application for an invention derived from multinational resources? This question deserves serious consideration by any entity engaged in cross-border invention.
The root of the problem lies in the balkanized global regulatory environment of patent law, with the laws of multiple countries each requiring the filing of affected patent applications first in that country. Protective patent filing laws are easy enough to comply with when only one jurisdiction is implicated. But in the case of inventions developed in various places or by various inventors working together, these protective provisions can quickly come into direct conflict with one another. Indeed, these competing provisions can make filing a patent application in any country a violation of at least one other country’s laws.
The relevant U.S. law, for example, applies only to inventions “made in this country.” Similar language appears in the patent laws of Russia and China. In determining the locus of invention, relevant criteria may include the physical site of facilities and labor, where the invention was conceived and the location of scientists with background knowledge indispensable to the invention.
The relevant U.K. law, by contrast, applies to any “person resident” in the country and thus applies broadly to any invention made by a U.K. resident anywhere in the world. “Person resident” language appears in the patent laws of India, Malaysia, Singapore, South Korea, New Zealand and France. The potential for expansive interpretation of resident status necessitates careful scrutiny of development teams. Singapore, for example, broadly defines “person resident” to include any person “residing in Singapore by virtue of a valid pass.” Especially problematic is the Indian measure, which does not provide any definition of “person resident” in its patent law—some practitioners report relying on the expansive definition provided in Indian tax law, which could apply to the citizen of any country who has spent a certain amount of time in India.