• Just What Does a Foreign Filing License Cover?
  • March 28, 2006 | Author: Susan M. C. Kovarovics
  • Law Firm: Foley & Lardner LLP - Washington Office
  • A U.S. subsidiary of a German company sends all invention disclosures to its parent company in Germany for review by the company's patent committee. In an effort to reduce costs, another U.S. company decides to outsource its patent processing to a technology center in India. All information about U.S. inventions is provided to the patent processing center in India, where engineers and patent agents prepare applications for filing in the United States. Do these scenarios raise questions under U.S. export controls? Short answer: Yes. If a foreign filing license were obtained from the United States Patent and Trademark Office (PTO), would it cover these transactions? Short answer: No.