USPTO Addresses Foreign Preparation of U.S. Patent Applications

Are you considering outsourcing preparation of your next United States patent application to a practitioner in a foreign country? Have you been encouraged to do so to save money? According to the U.S. Patent and Trademark Office (USPTO), such a decision may be a violation of U.S. law.

In a recent Federal Register notice (73 Fed. Reg. 42781), USPTO addressed the topic of patent applicants who use foreign law firms or service providers to prepare patent applications that will be filed in the United States. The USPTO reminded potential patent applicants that "[a]pplicants who are considering exporting subject matter abroad for the preparation of patent applications to be filed in the United States should contact the Bureau of Industry and Security (BIS) at the Department of Commerce for the appropriate clearances." The USPTO further noted that "if the invention was made in the United States, technical data in the form of a patent application, or in any form, can only be exported for purposes related to the preparation, filing or possible filing and prosecution of a foreign patent application, after compliance with the EAR [Export Administration Regulations] or following the appropriate USPTO foreign filing license procedure." However, a foreign filing license granted by the USPTO "is limited to purposes related to the filing of foreign patent applications," and "does not authorize the exporting of subject matter abroad for the preparation of patent applications to be filed in the United States."

As noted by the USPTO, the Federal Register notice "does not change existing law or regulations," or "excuse or otherwise affect the legal consequence of a failure to comply with existing law or regulations" that occurred prior to the date of the Federal Register notice.

If you have questions about this article or obtaining patent protection for your invention, please contact Tom Walsh or Mark Reichel.

This publication is intended for general information purposes only and does not and is not intended to constitute legal advice.  The reader must consult with legal counsel to determine how laws or decisions discussed herein apply to the reader's specific circumstances.