How to Ensure That Your Off-Shore Preparation of US Patent Applications Does Not Run Afoul of US Export Controls

Outsourcing the preparation of patent applications to off-shore service providers is growing in popularity among cost-conscious patent applicants and large-volume filers. This article points out that such firms offer US companies the opportunity to have their patent specifications drafted by enginee...

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Bibliographic Details
Published in:Intellectual property & technology law journal 2006-03, Vol.18 (3), p.8
Main Authors: McQuade, Paul F, Geren, Natalia W
Format: Article
Language:English
Subjects:
Commodities
Compliance
Defense
Enforcement
Export controls
Federal regulation
Fines & penalties
Guidelines
International trade
Jurisdiction
National security
Noncitizens
Offshore
Outsourcing
Risk assessment
Sanctions
Software
Technology
US exports
Violations
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Summary:Outsourcing the preparation of patent applications to off-shore service providers is growing in popularity among cost-conscious patent applicants and large-volume filers. This article points out that such firms offer US companies the opportunity to have their patent specifications drafted by engineers and patent agents in countries such as India and the Philippines, where wages are low but the pool of engineering talent is considerable. However, these services can run afoul of certain US export controls if not executed properly. Non-compliance can be avoided as long as those responsible for sending technical disclosures abroad understand US export regimes and take necessary steps to ensure that all is in order before transmitting technology abroad. The article highlights the risks and offers suggestions on how best to avoid unintended export controls violations. Following the export controls' tasks suggested can assist investors in their mission to successfully file a patent application that will provide the desired property protections.
ISSN:1534-3618