Patent Law

Hold Up There On That Outsourcing of Patent Work

By Stephen Albainy-Jenei

The U.S. Patent and Trademark Office (USPTO) sent out a gentle reminder in the Federal Register to all patent applicants and registered patent practitioners that the export of subject matter (transfer of information) abroad under a foreign filing license is limited to purposes related to the filing of foreign patent applications.

The Notice states:

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.

Why?

If an 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 or following the appropriate USPTO foreign filing license procedure. See 37 CFR 5.11(c). A foreign filing license from the USPTO does not authorize the exporting of subject matter abroad for the preparation of patent applications to be filed in the United States.

Exports of technology related to commercial and  dual-use items are generally subject to the Export Administration Regulations (EAR)  administered by the U.S. Department of Commerce?s Bureau of Industry and Security (BIS); exports of technology related to defense articles are subject to the International Traffic in Arms Regulations (ITAR), administered by the U.S. Department of State?s Directorate of Defense Trade Controls (DDTC). However, jurisdiction is granted to the USPTO under both the EAR and ITAR for technical data that is exported for limited the purpose of filing or possible filing and prosecution of a foreign patent application.  The scope of a foreign filing license granted by the USPTO is set forth in 37 CFR 5.15.

It is noteworthy that foreign filing licenses (for the filing of a patent application in a foreign country) do not cover all information related to the invention ? only that which is truly necessary for the preparation of the application.  They also do not authorize the export of any technology that is not specifically submitted to the USPTO as part of a U.S. patent application or a petition for a foreign filing license. The USPTO explains:

For example, the USPTO has received short abstracts, PowerPoint® slides and even titles of inventions as the disclosure for which a foreign filing license is requested. Although the USPTO will usually process such requests, any foreign filing license granted under 37 CFR 5.15(a) or 5.15(b) on such short description may not authorize filing abroad the ultimate resulting patent applications and may not authorize any additional material added after the initial foreign filing license request. Such additional material that was not submitted to the USPTO for its review may be deemed to have altered ??the general nature of the invention in a manner which would require such application to be made available for inspection under such section 181.??

Furthermore, a foreign filing license does not permit transfers of technology that occur between employees of a company located in the U.S. and employees of an affiliated company overseas. A license must be obtained from the U.S. Department of Commerce or U.S. Department of State (depending on the technology) in order to  report on new inventions to a foreign parent company.  A foreign filing license also does not authorize the transfer of controlled technology to foreign nationals located in the U.S. as this is also classified as an export.

The USPTO has established a Licensing and Review web page that includes frequently asked questions regarding foreign filing licenses and related matters.   Information regarding the EAR may be obtained from the BIS Web site here.

This notice does not change existing law or regulations so it doesn’t mean exports without a license before the Notice were OK.  Now’s a good time to rethink outsourcing.

See: Outsourcing Legal Work (to the Midwest)

Full post as published by Patent Baristas on July 31, 2008 (boomark / email).