By Christopher P. Singer --
In a Notice published in the Federal Register (73 Fed. Reg. 42781) on Wednesday, July 23, 2008, the U.S. Patent and Trademark Office discussed the general scope of the foreign filing licenses that it issues. While the Notice states that it serves to clarify the existing law and regulations, the USPTO was motivated to publish it in light of the Office "becoming aware that a number of law firms or service provider companies located in foreign countries are sending solicitations to . . . practitioners offering their services in connection with the preparation of patent applications to be filed in the United States." The Notice reminds practitioners that the export of subject matter abroad pursuant to a USPTO-issue foreign filing license is limited to purposes related to the filing of foreign patent applications (see 37 C.F.R. § 5.15). The Notice states unequivocally that a foreign filing license from the USPTO does not authorize exporting of subject matter abroad for the preparation of patent applications to be filed in the United States.
Accordingly, Applicants who consider 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 Commerce Department in order to secure the appropriate clearances, as the USPTO's foreign filing licenses do not authorize this exportation. This Bureau promulgates the Export Administration Regulations (EAR) which govern the export of a variety of goods and materials, including technical data. More information regarding the EAR can be found at the Bureau's website, or the Bureau's Outreach and Educational Services Division, which can be contacted at 202-482-4811.
Those wishing to get further information regarding this Notice can contact Mr. Mike Carone, Supervisory Patent Examiner, Technology Center 3600 by telephone at 571-272-6873.
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