Comments on: USPTO Ends Patent Outsourcing to India http://www.ipwatchdog.com/2008/07/29/uspto-ends-patent-outsourcing-to-india/id=184/ Patents, Patent Applications, Patent Law Thu, 11 Mar 2010 21:52:01 +0000 http://wordpress.org/?v=2.9.2 hourly 1 By: Senthilnk http://www.ipwatchdog.com/2008/07/29/uspto-ends-patent-outsourcing-to-india/id=184/#comment-141 Senthilnk Sat, 27 Sep 2008 21:49:21 +0000 http://www.ipwatchdog.com/?p=184#comment-141 Dear Gene, Thank you for posting your opinion. Was there any change in Department of commerce export rules with effect from July'23? Dear Gene,

Thank you for posting your opinion.

Was there any change in Department of commerce export rules with effect from July’23?

]]> By: Gene Quinn http://www.ipwatchdog.com/2008/07/29/uspto-ends-patent-outsourcing-to-india/id=184/#comment-139 Gene Quinn Fri, 26 Sep 2008 17:32:55 +0000 http://www.ipwatchdog.com/?p=184#comment-139 Senthink- I appreciate your opinions, but you are 100% incorrect. If the Department of Commerce is actually going to enforce the export rules as they are written then the transmission of any information regarding technologies outside the US will cease. So you can believe what you want, but the truth is that the export rules prohibit the transmission of information outside the US. Most of what you say are not affected by the notice clearly involve the transmission of information outside the US. So whether or not the notice addresses these things specifically is of no importance. The export laws clearly would prohibit these things and given that the USPTO has sent out this notice it is reasonable to believe the Department of Commerce intents to crack down. Those who outsource to India do so at their own risk, and the risks are great. Eventually someone will be made an example of and that will be unfortunate. -Gene Senthink-

I appreciate your opinions, but you are 100% incorrect. If the Department of Commerce is actually going to enforce the export rules as they are written then the transmission of any information regarding technologies outside the US will cease.

So you can believe what you want, but the truth is that the export rules prohibit the transmission of information outside the US. Most of what you say are not affected by the notice clearly involve the transmission of information outside the US. So whether or not the notice addresses these things specifically is of no importance. The export laws clearly would prohibit these things and given that the USPTO has sent out this notice it is reasonable to believe the Department of Commerce intents to crack down.

Those who outsource to India do so at their own risk, and the risks are great. Eventually someone will be made an example of and that will be unfortunate.

-Gene

]]> By: Senthilnk http://www.ipwatchdog.com/2008/07/29/uspto-ends-patent-outsourcing-to-india/id=184/#comment-137 Senthilnk Thu, 25 Sep 2008 19:27:30 +0000 http://www.ipwatchdog.com/?p=184#comment-137 From the notice, what I can conclude is 1. US patent filers should not consider a foreign filing license as the authorization required to send invention disclosures to India for drafting a complete patent application 2. US patent filers must conduct an export clearance check before sending invention disclosures to India for drafting patent applications 3. If the export clearance check reveals that the subject matter is a controlled item, the US patent filer must seek the necessary clearance from the BIS. Following are the IP outsourcing services which will not affect by the notice are: Invalidity Search, Proofreading of issued US patents, Remote Electronic Docketing, Office Action Response Aid, Novelty Searches, Patent Licensing Support Services, White space analysis, patent mapping, technology landscape studies, File Wrapper Analysis and Paralegal Services. Therefore, there will not be major impact on offshoring IP Services to India. http://indiapatents.blogspot.com From the notice, what I can conclude is

1. US patent filers should not consider a foreign filing license as the authorization required to send invention disclosures to India for drafting a complete patent application
2. US patent filers must conduct an export clearance check before sending invention disclosures to India for drafting patent applications
3. If the export clearance check reveals that the subject matter is a controlled item, the US patent filer must seek the necessary clearance from the BIS.

Following are the IP outsourcing services which will not affect by the notice are:
Invalidity Search, Proofreading of issued US patents, Remote Electronic Docketing, Office Action Response Aid, Novelty Searches, Patent Licensing Support Services, White space analysis, patent mapping, technology landscape studies, File Wrapper Analysis and Paralegal Services.

Therefore, there will not be major impact on offshoring IP Services to India.

http://indiapatents.blogspot.com

]]> By: sikdar http://www.ipwatchdog.com/2008/07/29/uspto-ends-patent-outsourcing-to-india/id=184/#comment-104 sikdar Thu, 04 Sep 2008 10:20:43 +0000 http://www.ipwatchdog.com/?p=184#comment-104 I think your article above does not address some critical points. Out of the $2.2 billion per year patent outsourcing industry to India the major part constitutes of Prior Art Searches (Invalidation) and Landscape Analysis. Both these utilize existing and published material freely available and no new technology needs to be sent out of US, in violation with EAR. So these IP services are still going to flourish. I agree that patent drafting work from India may be sub-par but then again that constitutes a very small chunk of whole patent outsourcing business. I really do not know what is going to happen to Freedom-To-Operate Searches but I guess they are not going to be hampered much, either. Further, there could be a possible way to get away with the rule, let me know if this is correct or not: to send the technical details/invention to a subsidiary in a foreign nation and from there pass the info to India or whatever outsourcing country. Would that be a violation of EAR? One more question: if a work is being done in parts, simultaneously in three countries, one being US and the data is being checked in on a central repository which can be accessed from all the three locations, would EAR be able to stop the persons in other two countries from submitting the details for patent outsourcing work? I think your article above does not address some critical points. Out of the $2.2 billion per year patent outsourcing industry to India the major part constitutes of Prior Art Searches (Invalidation) and Landscape Analysis. Both these utilize existing and published material freely available and no new technology needs to be sent out of US, in violation with EAR. So these IP services are still going to flourish. I agree that patent drafting work from India may be sub-par but then again that constitutes a very small chunk of whole patent outsourcing business. I really do not know what is going to happen to Freedom-To-Operate Searches but I guess they are not going to be hampered much, either.
Further, there could be a possible way to get away with the rule, let me know if this is correct or not: to send the technical details/invention to a subsidiary in a foreign nation and from there pass the info to India or whatever outsourcing country. Would that be a violation of EAR?
One more question: if a work is being done in parts, simultaneously in three countries, one being US and the data is being checked in on a central repository which can be accessed from all the three locations, would EAR be able to stop the persons in other two countries from submitting the details for patent outsourcing work?

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