Patent Outsourcing India
To some organizations, namely global
corporations like Microsoft and General
Electric, supplementing patent operations, these
companies are already comfortable dealing with
the difficulties of offshore operation, and have
brilliant infrastructures currently in place to
support the implementation of new processes. To
most organizations (including law firms),
however, sending patent work abroad is a radical
departure from what is thought about acceptable
practice. The apprehension of these
organizations is unquestionable and their
concerns are perfectly well-founded; however,
the barriers are not insurmountable and ought to
be properly understood before any final
decisions are made.
Ethical Considerations
The most obtrusive barrier stopping universal
acceptance of patent legal outsourcing is grounded in
ethical considerations. While not always purely
legal in nature, patent related work ought to
always be thought about legal because at the
most essential level, patents are in fact legal
instruments. Arguably, all activity related to
the preparation, prosecution, maintenance, and
litigation of patents is legal activity in some
capacity, because such activity will ultimately
affect the applicants intellectual property
rights. As such, attorneys who are involved with
outsourcing patent work must be diligent in
ensuring ethical obligations are maintained at
all times.
Ethical concerns related to patent outsourcing
boil down to categories: confidentiality
(secrecy) and competence. For years, patent
attorneys in the U.S. have farmed-out analysis
projects, prior art searches, and even
preliminary application drafting to domestic
companies that employ a primarily non-attorney
workforce consisting of patent agents,
engineers, scientists, and even trained
individuals with small or no qualified academic
background. In sending out projects to these
domestic companies, attorneys risk a breach of
secrecy and a drop in quality that is equivalent
to the risks associated with outsourcing to an
offshore provider.
The most effective ways to mitigate the risks of
legal outsourcing patent work apply to both domestic
and offshore arrangements. First, it is
imperative to know the details of the
outsourcing company operations. Before
committing to a working relationship, create a
powerful rapport with the company executives.
This does over ease the nerves of the parties
involved, it also dramatically increases the
level of accountability felt by the service
provider. Second, No conscientious attorney
would blindly sign-off on work-product created
by someone other than himself; thus, all
attorneys ought to expect to spend a reasonable
amount of time revising work-product received
from an outsourcing company. Any attorney
contemplating outsourcing needs to understand
that the true check of gainful outsourcing is
not finding the lowest priced labor or receiving
the best work-product, but realizing the most
value per dollar.
United States Export Controls
A lesser-known barrier stopping full acceptance
of patent outsourcing is federal export
regulations restricting international
dissemination of definite technologies. These
restrictions apply to enabling technical
disclosures and are not limited to tangible
goods. There's regulatory agencies that enforce
the U.S. export laws: the Directorate of Defense
Trade Controls (DTC) and the Bureau of Industry
and Security (BIS). The primary purpose of the
DTC is to control the import and export of
munitions and weapon know-how by enforcing the
International Traffic in Arms Regulations.
Conversely, the BIS is responsible for enforcing
and implementing the Export Administration
Regulations (EAR), and has regulatory control
over a large array of technologies ranging from
'dual
use' items to purely commercial goods.
Items subject to EAR are enumerated on the
Commerce Control List (CCL), but the
applicability of the CCL varies depending on
what foreign nation is in query.
(a) Does the invention employ know-how similar
to what is identified on the United States
Munitions List?
(b) What categories of know-how are restricted
from the country where the outsourcing vendor's
employees can be found?
(c) Does the invention employ know-how similar
to what is identified on the CCL for any
restricted categories determined in (b)?
Adhering to the BIS and DTC regulatory
frameworks is absolutely essential for any
organization interested in outsourcing patent
work to a foreign country. Failure to comply
with federal export regulations may finish up in
extreme fines and even imprisonment.
Additionally, know-how that could warrant a
secrecy order issued by the USPTO may lose
future patent rights because of premature
foreign disclosure. The first step to making
sure compliance is correct classification of the
know-how in query. Invention classification
ought to be a joint hard work between the
inventor and his attorney, with the service
provider acting as a final safety net. The
following must be determined before any
invention disclosure leaves American soil:
If the answer to either (a) or (c) is
affirmative, no attorney ought to submit the
invention disclosure to an offshore provider
without proper government authorization in the
type of an export license. In this situation,
the risk-to-benefit ratio is high to bet on
foreign outsourcing. Even if the invention
passes this internal screening check, it is nice
practice to contact a BIS counselor if
uncertainty exists.
There's several compelling reasons, however,
that ought to prevent organizations from
becoming excessively discouraged with the
consequences of potential export violations.
First, only information that is unpublished (not
in the public domain) is restricted by U.S.
export controls. This means that plenty of
patent services can be freely outsourced, even
if the invention in query falls within the scope
of the ITAR or EAR. In practice, only patent
application drafting and early-stage prosecution
matters are limited by export controls, because
only these services require a full enabling
disclosure to be sent abroad. Second, the large
majority of inventions that enter the patent
technique are entirely unrelated to the
sensitive technologies protected by the export
laws. In FY 2007, only 128 secrecy orders were
issued out of 362,227 applications examined that
year. Additional research shows that the large
majority of patents granted each year fall in to
classifications that do not relate to the
restricted items in the CCL or U.S. Munitions
List. Therefore, while the general idea of
patent outsourcing may not sit well with every
U.S. attorney, it is hard to argue that the
practice of doing so is an unacceptable risk in
light of U.S. export controls.
Conclusion
The United States legal technique and the economic forces that drive it are institutions that will last for hundreds of years to come. The recent growth in IP activity has only strengthened the bond between attorneys and corporations, but the balance of power is shifting in favor of a free-market approach to legal services. In todays global economy, opportunities exist to maximize operational efficiency that the world has never seen. Plenty of of these opportunities are brilliant and profitable endeavors, while others are ill-advised risks able to devastating an organization. Definitely, diving head-first in to uncharted waters is a foolish mistake with regard to patent services. However, with a patient and educated approach, patent outsourcing can be a highly rewarding decision for everyone involved. Offering over cost-savings, effective outsourcing can translate in to better work environments, happier clients, shorter hours, and more efficient use of company time. Patent outsourcing India Patent outsourcing Delhi
