Outsourcing will continue

Dear Madam,

We read your recent article by Peter Ludwig entitled The perils of patent outsourcing. The article is an intriguing and a well-thought-out piece of work relating to patent outsourcing. It clearly addresses the potential violations that may occur in outsourcing patent drafting to India, and provides solutions to the same. We have some similar opinions to share with you in this regard.

We understand that the USPTO notification dated 23 July 2008 limits the scope of a foreign filing licence to purposes related only to filing a patent outside the US. The notice explains, “A foreign filing license from the USPTO does not authorize the exporting of subject matter abroad for the preparation of patent application to be filed in the United States”.

It further directs applicants exporting subject matter abroad for the preparation of patent applications to be filed in the US to contact the Bureau of Industry and Security (BIS) to procure the approval for exporting the invention/technology. We also understand from your article that an inventor himself, or patent practitioners with a proper understanding of the EAR, can determine whether a licence is necessary to export a particular technology to a foreign country without needing to consult the BIS. This is an excellent method that saves time which might otherwise be spent, unnecessarily, in getting the clearance of the BIS for inventions falling outside the export control list.