US FIRM exporting drawings to INDIA

[PATENTGUY]

if patent drawings are sent overseas to INDIA and are illustrated by a native of INDIA, then send back to the US to a company (patent illustration company) then they pass the drawings to the US patent atty to file in the US PTO office for a US Patent...

can one side of the fence dispute the drawings and have those drawings thrown out because of the wording posted in

"Federal Register / Vol. 73, No. 142 / Wednesday, July 23, 2008 / Notices"
"DEPARTMENT OF COMMERCE United States Patent and Trademark
Office [Docket No.: PTO–P–2008–0024] Scope of Foreign Filing Licenses"

"Applicants and registered patent practitioners are reminded that the export of subject matter abroad pursuant to a license from the USPTO, such as a foreign filing license, is limited to purposes related to the filing of foreign patent applications. Applicants who are considering"....

"Furthermore, if the 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,"...

"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."

Also here is the kicker....

The US patent company is not telling the US atty that the work is being emailed to INDIA...they are using names for the people in INDIA like Joe Smith, Ed Johnson...without any phone numbers to call...

Can this patent illustation company get in trouble?What is the name of your state (only U.S. law)?

[divgradcurl]

I guess technically the firm sending materials overseas could get in trouble if the technology was one of the various technologies requiring an export license for export -- not all technologies require an export license. The department of commerce maintains lists of what technologies require an export license in order to legally export. Check here for more info: [url=http://www.bis.doc.gov/licensing/exportingbasics.htm]Export Control Basics (Exporting 101)[/url]

But this wouldn't get the company in trouble with the Patent Office -- it would get the company in trouble (if at all) with the Department of Commerce.

Or are you trying to invalidate a patent based on this? I have never heard of such a defense, and I don't know of any reason why it would fly. The MPEP doesn't specify who can make the drawings, only the appropriate drawings be submitted.

Maybe you could come up with some clever argument that this is somehow fraud on the patent office, and therefore inequitable conduct -- but that would require some knowledge on the part of the patent attorney, which might be hard to prove.

[PATENTGUY]

Im not looking at getting the PTO in trouble or anything...
because of this statement

"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."

Because of this statement...foreign license or not....a US Patent ATTY can not export subject matter (drawings) abroad (India) for US Patent...

If im reading this wrong let me know...

[divgradcurl]

Originally Posted by PATENTGUY

Im not looking at getting the PTO in trouble or anything...
because of this statement

"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."

Because of this statement...foreign license or not....a US Patent ATTY can not export subject matter (drawings) abroad (India) for US Patent...

If im reading this wrong let me know...

I don't believe that your conclusion is correct.

My understanding here is that first, you need to determine if the technology that you wish to export can be exported without a license from the department of commerce. Not all technology requires an export license. If the technology does not need a license for export, then a patent practitioner is free to send stuff over to be worked on in India or wherever.

If a license is required, then a foreign filing license is not sufficient to legally export the technology, except for the limited purpose of filing a foreign patent application. If a patent practitioner wants to send such technology to India to have it prepared, they need an export license from the department of commerce -- a foreign filing license is insufficient.

In other words, the piece you quoted doesn't mean that you can't export an application to India to have it worked on for filing in the U.S. -- it means that you can't rely on a USPTO foreign filing license to satisfy export license requirements, if such requirements exist.

That's how I understand this all works.

[PATENTGUY]

Thanks for your thoughts on this matter...they have been very helpfull.

So the patent illustrating company would have to keep say a M16 weapon patent from export to INDIA?

If there servers are hosted in india and their IT dept is ALL from india who have full access to the M16 matter (even if they are not illustrating it) then that would be an issue with Department of Commerce?

FYI the prior patent drafting firm i worked for didnt tell the us patent firms/atty that they were export there work to india...to the extent to give the india people SUDO names..like sara, John, April....i didnt think it was right to not inform our clients...thus i left...and will be heading back to school.

There is nothing that will happen to a US patent atty that send there work to a patent illustation company that sends there non-security artwork out to india with or without the patent atty knowing?