Outsourced Patent Preparation

Foreign FIling Licenses are no joke.  A related matter is outsourcing of preparation of the patent application.  In time of increased concern about budgets, a company may be tempted to have searches, patent drawings, and even the patent specification or claims prepared offshore.  Not only might this be a false economy, which only becomes apparent years later, it may be illegal.

The USPTO has made it clear that “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.  http://www.uspto.gov/web/patents/patog/week53/OG/TOCCN/item-115.htm  

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.  Their website is http://www.bis.doc.gov but I suspect that it is easier and faster to have the work done in the US.

`© Robert Rose 2015