PANGEA3 LLC

The USPTO recently issued a notice regarding the outsourcing of patent prosecution work to foreign countries. It has become a hot topic in numerous IP blogs as bloggers speculate whether this notice ends patent outsourcing. To educate our clients and other interested parties, we’ve written a formal response explaining how the notice impacts the current patent prosecution work outsourced to India. A copy of it is below:

The United States Patent and Trademark Office (“USPTO”) recently issued a Notice in the Federal Register (Vol. 73, No. 142/Wednesday, July 23, 2008/Notices) titled, “Scope of Foreign Filing Licenses.” The Notice is directed toward the export of subject matter pursuant to a license from the USPTO.

The Notice reminds applicants and registered patent practitioners that the export of subject matter pursuant to a license from the USPTO is limited to the filing of foreign patent applications. More as a reiteration than a departure from existing law or regulations, the Notice serves as a reminder that exporting of subject matter for any purpose other than the filing of foreign patent applications (post a foreign filing license from the USPTO), requires obtaining the appropriate clearance from the Bureau of Industry and Security at the Department of Commerce.

The Notice does not purport to change or adversely affect the export of subject matter to, for example, an LPO. To the contrary, it addresses any doubts or confusion in connection with such an export. Stating it succinctly, export of any subject matter that does not require an export license is unaffected by the Notice.

The foregoing is in accordance with the Export Administration Regulations promulgated by the Bureau of Industry and Security that governs exports of various commodities, software and technology. Indeed, the Notice ends by stating that it “does not change existing law or regulations.” We agree.