Here are the steps to avoid breaching the Export Control Regulations when considering outsourcing patent preparation to India:
Perform an export classification assessment to determine if the product, service, or technology to be exported, i.e. subcontracted outside of the US territory for patent preparation, is controlled for export purposes.
This determination is made in three steps:
1. Determine if the product, service or technology is subject to EAR (Export Administration Regulations) of the BIS (Bureau of Industry and Security), the enforcement arm of the DOC (Department of Commerce), either by self-assessment by the CCL (Trade Control List), or preferably, by filing a CCR (Commodity Classification Request) with the BIS.
2. Determine if the merchandise, service or technology is subject to ITAR (International Traffic in Arms Regulations) of the DOS-DTC (Department of State – Defense Commercial Control Directorate), either by self-assessment of the USML (United States Munitions List ), or preferably, by filing a CJ (Commodity Justification) with DTC.
3. Screen the parties to the export transaction against the U.S. government’s list of prohibited persons, such as the DOC Denied Persons List, the DOC Denied Entity List, the DOC Unverified List, the DOT-SDIE list and the DOS list of disabled persons. If the patent is classified for export, obtain an export license from BIS or DTC, as appropriate. Note that this is not the equivalent of the USPTO foreign filing license as of now.
For bulk patents, please preferably obtain a general export license. Most patents are not governed by these regulations, and an inventor can easily determine if an invention is clearly not governed by export regulations. However, in case of doubt, it is advisable to go the extra mile to determine exportability; this is what we always advise our own clients. Even with all that, we still get them, because outsourcing is still much cheaper.