Updated: Sep 1, 2020
These are the steps to avoid infringement of Export Control Regulations in considering outsourcing patent preparation to India:
Perform an export-classification assessment in order to determine if the commodity, service or technology about to be exported, i.e., outsourced outside US soil for patent preparation, is controlled for export purposes.
This determination is done in three steps:
1. Determine if the commodity, service or technology is subject to EAR ( Export Administration Regulation) of the BIS ( Bureau of Industry and Security), the enforcement arm of the DOC( Department of Commerce), either by self-assessment of the CCL (Commerce Control List) , or preferably, by filing a CCR ( Commodity Classification request ) with the BIS.
2. Determine if the commodity, service or technology is subject to ITAR ( International Traffic in Arms Regulations) of the DOS-DTC ( Department of State –Directorate of Defense Trade Control ), either by self-assessment of the USML (United States Munitions List) , or preferably, by filing a CJ ( Commodity Justification) with DTC.
3. Screen any parties to the export transaction against the list of US Government’s Prohibited persons, like, the DOC Denied Persons list, the DOC Denied Entity list, the DOC Unverified list, the DOT-SDIE list, and the DOS Debarred Person’s List.
If the patent is export-classified, obtain an export license from BIS or DTC, whichever is relevant. Note that this is not the equivalent of the Foreign-filing license of the USPTO as of now.
For bulk-patents, preferably obtain a blanket export license. Most patents do not fall under these regulations, and an inventor can easily determine if an invention clearly does not fall under export-regulations. Yet, in cases of doubt, it is advisable to go through the additional effort to determine exportability; this is what we always advise our own clients. Even with all that, we keep getting them, because outsourcing is still much cheaper.
We hope this article provides you with insightful information to legally and securely outsource your intellectual property and portfolio management requirements, for any queries, please contact us at firstname.lastname@example.org or use our contact form.