Export Control Compliance
Because any U.S. data or technical information provided to a foreign national is considered an export under the Export Administration Regulations (EAR), PASS screens each disclosure prior to assigning the work to its India Patent Team. Our screener has been trained by the Bureau of Industrial Security (BIS), the agency responsible for the administration and enforcement of the EAR, to utilize the applicable sections of the EAR to determine if the subject matter of the patent application triggers an export license requirement; and if so, whether a license exception is available.
Similar to the statistics from the BIS on exports, the vast majority of patent disclosures we have received do not require an export license. As an aid to our clients to help them make this determination before submitting disclosures to us, below are the "red flag" areas where the subject matter/end use of a patent may require an export license. This includes:
- Nuclear, Chemical & Biological Weapons
- Crime Control
- Encryption and Dual-Use (commercial/military) Software
- Firearms Control
- Missile Technology
- Weapons that could threaten the National Security of the US
- Communications Intercepting or surreptitious listening devices
- Items for the development, production or overhaul of aircraft engines or components
The subject matter of any other patent disclosures that do not relate to the above-named subjects will normally be classified EAR99; and because they will not normally trigger any of the General Prohibitions, would be designated as No License Required (NLR).
If it is determined that an export control license is required, the screener will notify the client that the work cannot be accepted by PASS without an export control license; or a certification from an attorney that an export control license is not required.
Because all of the patent disclosure information goes to one place in India, there are a number of other steps that are taken by our facility to screen current employees and new hires against the various BIS lists to ensure compliance with other BIS requirements.
We often receive questions about the USPTO Notice issued July 23, 2008 entitled "Scope of Foreign Filing License". In this Notice the USPTO reminds patent practitioners that it has the responsibility and authority from the BIS to screen all patent applications that will be filed in a foreign country through its issuance of a Foreign Filing License. It goes on to point out that it has no screening ability or export authority over patent disclosures initiated in the U.S. and drafted in other countries for filing in the U.S. The Notice states in part:
Applicants who are considering exporting subject matter abroad for the preparation of patent applications to be filed in the United States should contact the Bureau of Industry and Security (BIS) at the Department of Commerce for the appropriate clearances.
Many patent professionals have interpreted this to mean that a foreign filing license is required to send patent disclosures to foreign countries. This is not the case. It does require that the disclosure be analyzed against the EAR, like any other export, to determine if an export control license is required. The PASS screening process satisfies this requirement.