The U.S. Patent and Trademark Office warned yesterday against the unauthorized outsourcing of preparatory work on U.S. patent applications to foreign countries.
Outsourcing patent application preparations has grown in recent years as some applicants have pushed the limits of PTO foreign filing licenses to cut costs, says Paul Rivard, a D.C. partner in Banner & Witcoff’s intellectual property practice. Such foreign filing licenses allow applicants to file for patents overseas, but they do not authorize exporting subject matter abroad to prepare patent applications for filing in the United States. “Patent preparation is becoming very competitive, and some folks have tried to take advantage of the system to save money where they can,” he notes.
Rivard says the notice emphasizes the PTO's distaste for outsourcing patent prep work. "A lot of people, including people at the PTO, are skeptical of having work done by people who may not be licensed to practice in front of the agency and then essentially ghostwriting these applications," he explains.
Rivard says the restriction might be difficult to enforce unless a patent application has to be litigated. “There is a practical difficulty in enforcing penalties because in a normal case there probably wouldn’t be any evidence to show that the preparation work had been done overseas,” Rivard says. “Evidence may turn up in the discovery phase of litigation, but otherwise it would be hard to uncover.”
The PTO notice doesn’t rule out outsourcing work entirely. Applicants can still get clearance from the Bureau of Industry and Security at the Department of Commerce to ship the subject matter overseas.