On July 23, 2008, the United States Patent & Trademark Office (USPTO) published a notice in the Federal Register, stating that it may be illegal to outsource invention information to a foreign country for the purposes of preparing a patent application to be filed in the United States. In the notice, the USPTO reminded applicants and registered patent practitioners that exporting subject matter abroad in compliance with a valid foreign filing license is limited only to preparing, filing and prosecuting a foreign patent application and not to preparing, filing and prosecuting a U.S. patent application. As such, the USPTO advised applicants wishing to export discoveries in the United States for purposes of preparing U.S. patent applications to contact the Bureau of Industry and Security at the Department of Commerce for an appropriate clearance.

The notice appears to be in response to the USPTO’s recent awareness that a number corporations within the United States outsource their patent drafting work. In particular, some corporations have recently started to outsource application work to foreign countries, such as India. The reason is simply that the cost associated with preparing a patent application in India is much less than the cost associated with preparing the same application in the United States. Statistically, the cost of preparing a patent application in India averages about $2,000, whereas the cost to prepare the same application in the United States ranges from about $8,000 to $15,000. While it may be more cost-effective for corporations to have their patent applications drafted abroad, the USPTO’s notice hints at ending this practice.

Practice Note: Clients contemplating outsourcing patent preparation should not only be aware of possible quality control issues attendant to patent applications drafted abroad, but the possibility of a future enforceability issue as well.