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By Matthew Berkowitz

Foreign Outsourcing for Domestic Patent Prosecution

The U.S. Patent and Trademark Office (“USPTO”) issued a warning advising against outsourcing patent prosecution to foreign countries for patents intended for U.S. filing. Scope of Foreign Filing Licenses, 73 Fed. Reg. 42,781 (July 23, 2008). The USPTO issued the warning in response to solicitations from foreign law firms and service providers to U.S. patent practitioners. The USPTO reminded practitioners that exporting patent prosecution is subject to a foreign filing license (“FFL”). U.S. patent practitioners may apply for an FFL at the Bureau of Industry and Security. Regardless of whether an FFL is granted, it does not authorize exporting U.S. patent prosecution for patents intended for U.S. filing, and an FFL is strictly limited to services related to foreign patent applications.

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