USPTO Issues Warning Notice to U.S. Firms Outsourcing Preparation of Patent Applications

July 25, 2008 – Firm News

July 23, 2008. The U.S. Patent and Trademark Office today issued a warning notice to U.S. patent practitioners cautioning them against the outsourcing of the preparation of U.S. patent applications (click here for a PDF copy of the USPTO Notice).

The Notice, which appeared at 73 Federal Register 42781, cautioned U.S. patent practitioners against exporting technical information to foreign service providers, even if the Applicant had obtained a foreign filing license, as this requires special clearance by the Department of Commerce (Bureau of Industry and Security). The Office cautions: “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… 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."

The Notice goes on to caution: "Thus, while the notice is effective on July 23, 2008, this notice does not excuse or otherwise affect the legal consequence of a failure to comply with existing law or regulations that occurred prior to July 23, 2008."

Please contact us if you have any questions or concerns about this important issue.