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Export Control Regulations and Offshoring Patentability Search Process

  • 04 Feb 2021 5:45 PM
    Reply # 10062264 on 10055318

    In Australia we have the Defence Strategic Goods List 

    which for my employers as patent attorneys means that they cannot send a provisional application to be filed overseas without an export permit if it falls within the subject matter described in the list.

    It doesn't seem to be very stringent but then I don't think we've ever had one that needed a permit, and as long as we follow the right processes and undertake as much due diligence as we can then we're generally ok.

  • 02 Feb 2021 3:19 AM
    Message # 10055318

    US organizations are attracted to the opportunity of reduced costs and increased speed associated with offshoring patentability search and generating thousands of inventions every year with their active R&D departments. This thought has further found pace specially after current COVID situation where companies have realized remote working is possible to hih extent.  

    However, they are obvious concerns about ensuring compliance with export control regulations of such offshoring.

    This brings me to the question

    1. How stringent are the control procedure and what are the legitimate best practices for conducting such on-shore and off-shore outsourcing?

    2. More importantly, if a company is facing an opportunity of offshoring patentability search, how does it manage to map the export control regulations to ensure compliancehow does one identify what is to be controlled according to the US Export Control Decision Tree? What is the category of technologies that fall under the ‘No License Required’ or NLR items?

    3. If you have offshored patentability searches in the past - what are your recommendations for others?  

    Our team also tried to explore this topic in a discussion with a US based search firm - here is the video of that discussion. Please help us fine tune it further!

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