Patent Law

Illegal

By Gary Odom and Jordan Kuhn

The USPTO posted a warning in the Federal Register about using foreign patent prosecution companies. Under 15 CFR 730-744, technology exports are subject to government approval by the Bureau of Industry and Security (BIS) at the Department of Commerce. If caught sending your software patent application to a cut-rate prosecution shop in Bangalore, you will be spanked and your patent yanked.

Jon W. Dudas, laying down the law:

The USPTO has become aware that a number of law firms or service provider companies located in foreign countries are sending solicitations to U.S. registered patent practitioners offering their services in connection with the preparation of patent applications to be filed in the United States. Applicants and registered patent practitioners are reminded that the export of subject matter abroad pursuant to a license from the USPTO, such as a foreign filing license, is limited to purposes related to the filing of foreign patent applications. Applicants 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. See MPEP Sec. 140 (8th ed., Rev. 5, Aug. 2006).

MPEP 140 tells of the penalties: your patent could be vaporized, up to $10,000 fine, and two years in the slammer. Your tax dollars at work keeping patents safe from being outsourced by scofflaw inventors. Loose lips sink ships and all that.

35 U.S.C. 185 Patent barred for filing without license.

Notwithstanding any other provisions of law any person, and his successors, assigns, or legal representatives, shall not receive a United States patent for an invention if that person, or his successors, assigns, or legal representatives shall, without procuring the license prescribed in section 184 of this title, have made, or consented to or assisted another's making, application in a foreign country for a patent or for the registration of a utility model, industrial design, or model in respect of the invention. A United States patent issued to such person, his successors, assigns, or legal representatives shall be invalid, unless the failure to procure such license was through error and without deceptive intent, and the patent does not disclose subject matter within the scope of section 181 of this title.

35 U.S.C. 186 Penalty.

Whoever, during the period or periods of time an invention has been ordered to be kept secret and the grant of a patent thereon withheld pursuant to section 181 of this title, shall, with knowledge of such order and without due authorization, willfully publish or disclose or authorize or cause to be published or disclosed the invention, or material information with respect thereto, or whoever willfully, in violation of the provisions of section 184 of this title, shall file or cause or authorize to be filed in any foreign country an application for patent or for the registration of a utility model, industrial design, or model in respect of any invention made in the United States, shall, upon conviction, be fined not more than $10,000 or imprisoned for not more than two years, or both.

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Full post as published by The Patent Prospector on July 23, 2008 (boomark / email).