USPTO Publishes Notice Reminding Patent Filers of Export Controls
07/29/08 07:18 PM
On July 23, 2008, the United
States Patent and Trademark Office (USPTO) published
a notice in the Federal
Register regarding the scope of its foreign
filing licenses. Through the notice, USPTO reminds applicants and
registered patent practitioners that the export of subject matter
abroad pursuant to a license from the USPTO, such as a foreign
filing license, is limited to the purposes related to the filing of
foreign patent applications. The USPTO reminds applicants who are
considering exporting subject matter abroad for the preparation of
patent applications to be filed in the United States to contact the
Bureau of Industry and Security (BIS) of the Department of Commerce
for appropriate clearances.
In the notice, the USPTO states that it has become aware that a number of law firms or service provider companies located in foreign countries that 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. The USPTO states that, "if an invention was made in the United States, technical data in the form of a patent application, or in any form, can only be exported for purposes related to the preparation, filing or possible filing and prosecution of a foreign patent application, after compliance with the EAR or following the appropriate USPTO foreign filing license procedure. See 37 CFR 5.11(c). 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."
Finally, the USPTO states:
In the notice, the USPTO states that it has become aware that a number of law firms or service provider companies located in foreign countries that 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. The USPTO states that, "if an invention was made in the United States, technical data in the form of a patent application, or in any form, can only be exported for purposes related to the preparation, filing or possible filing and prosecution of a foreign patent application, after compliance with the EAR or following the appropriate USPTO foreign filing license procedure. See 37 CFR 5.11(c). 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."
Finally, the USPTO states:
This notice does not change existing laws or regulations. 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.