Foreign Outsourcing of Application Preparation May Require Export Administration Review

According to the USPTO on July 23, 2008,

Applicants and registered patent practitioners are reminded that the export of subject matter abroad pursuant to a license from the United States Patent and
Trademark Office (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.

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 Export Administration Regulations (governing exports of dual-use commodities, software, and technology, including technical data, which are codified at 15 CFR Parts 730–774) 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.

Information regarding the EAR may be obtained from the BIS Web site at http://www.bis.doc.gov. Questions regarding the EAR should be directed to the BIS’s Outreach and Educational Services Division at (202) 482–4811.