Eye on IP

Vol. No. 2008 - Issue No. 4
August 2008

DANGERS OF OFFSHORE PATENT APPLICATION PREPARATION

Many companies offer discounts on preparing U.S. patent applications offshore, principally in India. As attractive as this may seem, a recent U.S. Patent Office notice outlines just one of the dangers of going offshore: in many instances, exporting technical information is illegal. The Patent Office recommends that those seeking offshore preparation check with the U.S. Department of Commerce Bureau of Industry and Security regarding the legality of sending their particular invention details abroad without a license. There can be significant criminal penalties for violating these regulations.

Two other reasons demand caution before sending technology offshore for patent application preparation. The first is the limited protection available offshore against technology theft. Not all legal systems protect trade secrets as well as that of the United States. The second reason is one of quality. For more than 100 years, the Supreme Court has recognized that:

"The specification and claims of a patent, particularly if the invention be at all complicated, constitute one of the most difficult legal instruments to draw with accuracy ..." Topliff v. Topliff, 145 U.S. 156, 171 (1892).

The risk of inadvertent violation of criminal law statutes; the loss of trade secrets; and a weak patent due to poor quality patent drafting are a heavy price to pay for the perception of saving money by going overseas.

"Eye on IP" is a trademark of Sheldon Mak & Anderson. Information provided in the "Eye on IP" newsletter is not intended to be a comprehensive summary of recent developments in the law, treat exhaustively the subjects covered, provide legal advice or render a legal opinion.