Sunday, 10 August 2008

US moves to end patent outsourcing?

A friend of mine sent me (and the rest of my former colleagues) an email saying this:

. . . you guys are all effectively going to be blocked from working on US-originated inventions, at least without getting special permission from the U.S. Dept of Commerce or U.S. Dept. of State.

Now, this is not related to any new laws, but to the blocking of the export of technology of US origin under the Export Administration Regulations (EAR), by which the Bureau of Industry and Security (BIS) has delegated its authority to the USPTO over what technology may or may not be exported. Here's the regulation:

(v) Patent and Trademark Office
(PTO). Regulations administered by
PTO provide for the export to a foreign
country of unclassified technology in
the form of a patent application or an
amendment, modification, or supplement
thereto or division thereof (37
CFR part 5). BIS has delegated authority
under the Export Administration
Act to the PTO to approve exports and
reexports of such technology which is
subject to the EAR. Exports and reexports
of such technology not approved
under PTO regulations must comply
with the EAR.

And if that wasn't clear enough, here's what the USPTO said in an official notice:

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. Applicants and registered patent practitioners are reminded that the export of subject matter abroad pursuant to a license from the USPTO, such as a foreign filing license, is limited to purposes related to the filing of foreign patent applications. 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.

My (completely un-expert and not to be taken as legal advice)take on this? Patent outsourcing is an industry already worth more than 2 billion USD a year, so it's not going to just disappear overnight. My guess is that this will discourage further outsourcing, but that the outsourcing that is already going on will continue. Too much money has already been invested for it not to. Likewise, so many patents have been filed through outsourcing that it would be grotesque for it to be used as a bar on patentability.

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