THINGS YOU NEED TO KNOW BEFORE YOU START – Part 1
Legal Process Offshoring (LPO) is now a well-known and widely accepted option for Patent Attorneys seeking workload or work deadline assistance, or for improving the efficiency/effectiveness of their practice. It is also a way for corporate IP departments to reduce the costs of outsourcing to outside firms, and/or hold the line on in-house staffing costs. Although the practice has met with the approval of the ABA, various state bar associations and the USPTO, there are a number of restrictions that accompany the use of LPO to protect you as the attorney and your clients.
PERFORM THE NECESSARY DUE DILIGENCE ON THE LPO PROVIDER BEFORE SENDING YOUR WORK
Some things to consider before selecting an LPO Provider include:
- How long have they been in business?
Obviously, the longer the Provider has been in business the greater the indication is that they possess the expertise to perform quality work.If less than a few years, it is important to get references from other attorneys who have used them.If that is not possible due to nondisclosure agreements (NDA), ask for samples of work they have provided to other clients.You may run into the same NDA issues, but normally in the case of a published patent application for example, some redaction could be used.However, again using the example of a published patent application initially drafted by the LPO provider, there is no real way of telling how much of the work was completed by the LPO provider and how much rework the attorney client had to do before it could be published.Therefore, the most effective way to determine the expertise of the LPO provider is send them a test case to see how they perform.Some will request a sample of your published patents to ensure their completed project matches as closely as possible in style to yours.
- How does the LPO Provider screen to avoid potential conflicts of interest?
This issue will vary depending on your practice, or the type of corporation you represent.For the solo practitioner or small IP firms working with individual inventors, the chances of a conflict could be extremely rare since even if the Provider has worked on another similar project for a different inventor, there is no inherent conflict.The conflict issue gets a little more complicated for IP firms representing corporations, or for in-house IP counsel.You will want to let the LPO Provider know upfront who your competitors, or your clients’ competitors are so the Provider can assure you they are not clients, and thus avoid the appearance of a conflict.Companies who could cause a potential conflict of interest for your clients should be listed in the Agreement so the Provider is precluded from working with them while they are working with you.If you add new clients your LPO Provider must be notified if additional conflicts may be triggered.
- How does the LPO Provider screen for potential Export Control issues?
This issue is often misunderstood by attorneys looking to use an LPO Provider.Export Administration Regulations (EAR) require that any exports to foreign nationals or other non-US citizens even if they reside in the US, must be screened to ensure an Export Control license is not required for the technology/data being exported.Once again using a draft patent application as an example, the disclosure submitted for the application to a non-citizen is considered an export under these regulations.Thus a screening must take place to ensure the disclosure does not require an export control license before it can be sent offshore.This is problematic for LPO Providers who do not have a US presence since providing them with a disclosure to screen is already a potential violation of the EAR.
Is the Technology disclosed within the Public Domain
The next question to be answered is whether the technology or software disclosed is in the public domain.If yes, the disclosure is not subject to the EAR and the screening can stop at this step.The one exception is encryption software which is always subject to the EAR.Clearly most patent disclosures will involve technology, data, or software that is in the public domain which is why the Export License screening is not as onerous as it is often considered to be.In addition, the Bureau of Industrial Security (BIS), charged with administering the EAR, offers training in Export Control compliance which would be of great benefit for LPO Providers in reassuring their clients that adequate screening is in place for this issue.
As a side note, companies in industries such as aerospace, defense, missile or weapons manufacture, nuclear technology, etc. are engaged with technologies that will require Export Control screening.These companies and the law firms that represent them are very aware of this requirement.As a business practice these companies will normally have in-house staff that performs this screening. Using an LPO Provider would most likely not be an option for these companies.
Finally, the discussion above is focused on drafting patent applications and the disclosure provided to the LPO Provider.The same would not necessarily be true for searches which are conducted using publicly available information, although the disclosure must not contain technology not in the public domain.The same would be true of office action responses which are based on patents publicly available in PAIR.