The latest USPTO notice which has several important implications for countries such as India, has interestingly been issued with a view to discourage “solicitations” by a number of law firms and/or service provider companies located in foreign countries with respect to preparation of patent applications to be filed in the U.S. on behalf of registered American patent practitioners.
The notice is essentially a reminder by the USPTO to persons concerned, since in practice there has been some transgression from the rules applicable off late:
- USPTO licensees exporting subject matter abroad, such as a foreign filing license, can do so for the limited purpose of filing of foreign patent applications and with prior clearance from the Bureau of Industry and Security (at the Dept. of Commerce).
- Applicants and registered patent practitioners have also been advised to ensure that any material or technology not specifically submitted to the USPTO as a part of a US Patent Application, not be a part of the subject matter for the filing of a patent application in a foreign country.
- Importantly, it reminds such applicants that no such export of subject matter is permissible where the purpose is the preparation of patent applications to be filed in the U.S.A.
The result: While it seemed like in 2002, the USPTO seemed to encourage the outsourcing of patent examination functions, and even initiated a drive to identify such organizations, they seem to now be more wary and in fact rather strict over what can be outsourced to firms abroad. Most outsourcing firms in developing countries, patent practitioners, and applicants, that handled such a bulk of patent applications, now have to be extremely careful and avoid a violation of any of the rules mentioned in the notice. Especially, since they came in with immediate effect (from
Read the full notice issued by the USPTO here.
