A recent notice published by the United States Patent and Trademark Office reminds the public of the dangers associated with engaging foreign patent practitioners to perform patentability studies and patent preparation work.  This notice (FR Doc. E8-16830) was likely in response to a number of solicitations coming from such foreign practitioners to U.S. firms.  The notice specifically discusses how working with foreign practitioners may violate United States technology export controls.  These export controls require a license be obtained from the government before certain technologies are sold or disclosed in a foreign country or to a foreign national.

In addition to potential criminal penalties and loss of patent rights for violation of these export controls, engaging a foreign patent practitioner presents a number of other risks.  Your confidential information may be at risk.  While the attorney-client privilege is well recognized in the U.S., this is not universally the case.  Information provided to foreign agents may be subject to discovery in litigation.  Foreign individuals may not fully understand or respect the obligations the attorney-client privilege places on U.S. lawyers.  Likewise, not all foreign practitioners are subject to the same ethical rules related to conflicts of interest in the U.S.  Thus, your confidential information could be used unwittingly or even purposefully for the benefit of a direct competitor.  Language and training issues also exist.  Even with the current global communication tools, sometimes the best way to communicate complex technical information is in a face-to-face meeting.

There are, of course, times when working with a foreign patent practitioner is essential.  We have developed relationships with experienced and ethical patent practitioners throughout the world who work with us and deal directly with foreign government patent offices.  However, they never receive any technical information from us in the absence of any license required by the U.S. government and to the extent practical only receive information which has or will become public as part of the U.S. patent process.

Jim Paige          (612) 392-7310           Jim.Paige@nm-iplaw.com