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   Outsourcing IP work overseas/secrecy order risks?
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   Author  Topic: Outsourcing IP work overseas/secrecy order risks?  (Read 2235 times)
Isaac
Senior Member
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Posts: 3472
Re: Outsourcing IP work overseas/secrecy order ris
« Reply #5 on: Oct 28th, 2004, 4:51pm »
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The quoted regulations determine who can be registered and
not who can draft a patent application.  To the extent that
patent applications can be drafted by non registered, but
supervised persons, those regulations would not prohibit
outsourcing.
 
It's fairly common for patents to be drafted by unregistered
people.  A friend of mine with a PhD in life sciences worked
for a firm while attending law school.  He only became
registered at the PTO after graduating from law school and
passing the state bar.
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Isaac
INTPAT
Guest
Re: Outsourcing IP work overseas/secrecy order ris
« Reply #6 on: Nov 2nd, 2004, 12:08pm »
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Foreign Filing license can be granted in one day in some countries.  
 
I also suggest getting a writing sample.  We have a lot of patents that come from Japan.  Most of the time, the patents have to be completely redrafted.
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Scott Lebson
Guest
Re: Outsourcing IP work overseas/secrecy order ris
« Reply #7 on: Nov 2nd, 2004, 12:40pm »
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How soon before they outsource the licensing work?  Good luck.
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Nyall Engfield
Guest
Re: Outsourcing IP work overseas/secrecy order ris
« Reply #8 on: Oct 19th, 2007, 9:08am »
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With respect to Indian patent drafters doing the work and then registering the patent in the US, from a business perspective I would be concerned with the drafters turning around and selling the technology within India for development. Some areas of technology the patent period is shorter than in the US, and other areas are not protectable at all (for instance, I believe India does not allow patents for pharmaceuticals). Then there is the question of enforcement...
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SoCalAttny
Guest
Re: Outsourcing IP work overseas/secrecy order ris
« Reply #9 on: Oct 19th, 2007, 1:36pm »
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The client needs to be fully briefed on the issues that have been posted above:
 
1) enforceable NDAs with the Indian drafters
 
2) privilige of confidentiality is waived with Indian drafters, as related to communications that have taken place
 
3) 2007 patent act may result in a shift to 1st to file vice 1st to invent, if the switch is made how do you protect your client that may have a slew of detailed invention disclosures overseas, potentially filed by Indians 1st
 
4) entanglement issues if a secrecy order is slapped on
 
5) Training in the new rules  -  5/25 who drafts the EDS? Do you limit number of claims?  
 
6) Malpractice for the US attorney  (a) if you miss something that results in limited coverage due to a drafting error or worse (b)  a poorly informed client beacuse the attorney breached the duty of competency based on the above.
 
 Who fully understands the new rules and how they will play out?    
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