U.S Government Controls on the Export of Technical Information
It is a common fallacy to believe that a foreign filing license granted by the US patent and Trademark Office permits the recipient to export the technical information contained in the patent application for a wide variety of purposes which are not in fact covered by that license.
37 CFR 5.11 in fact provides that for an invention made in the United States a foreign filing license from the USPTO is confined to:
filing any application for patent including any modifications, amendments, or supplements thereto or divisions thereof or for the registration of a utility model, industrial design, or model, in a foreign patent office or any foreign patent agency or any international agency other than the United States Receiving Office,
and
the export of technical data abroad for purposes relating to the preparation, filing or possible filing and prosecution of a foreign patent application.
As noted in 37 CFR 5.11(c) in other situations (including situations involving export of technical data relating to inventions made outside the United States, the export regulations contained the International Traffic in Arms Regulations (ITAR) of the Department of State, regulations of the Bureau of Industry and Security Regulations, Department of Commerce(commonly referred to as Export Administration Regulations – EAR) and the Assistance to Foreign Atomic Energy Activities Regulations of the Department of Energy must be complied with.
Beyond this, the Department of Commerce regulations at 15 CFR 734.10 provide that certain information relating to patent applications is not subject to the EAR unless ut relates to encryption software. Such information is listed as:
(a) Information contained in a patent application prepared wholly from foreign-origin technical data where the application is being sent to the foreign inventor to be executed and returned to the United States for subsequent filing in the U.S. Patent and Trademark Office;
(b) Information contained in a patent application, or an amendment, modification, supplement or division of an application, and authorized for filing in a foreign country in accordance with the regulations of the Patent and Trademark Office, 37 CFR part 5; 1 or
(c) Information contained in a patent application when sent to a foreign country before or within six months after the filing of a United States patent application for the purpose of obtaining the signature of an inventor who was in the United States when the invention was made or who is a co-inventor with a person residing in the United States.
For all other export of technology, State Departent, Department of Commerce or Department of Energy regulations apply. Although in many cases, export of technical information is permitted without the need for a license, this is not always the case and before making any “export (which as noted below could include simply telling something to a foreigner in the United States) consideration should be given as to whether a license is required.
Export controls can apply to export of technical information, re-export of technical information data and deemed export of technical information. Re-export occurs when someone to whom technical information has been given passes it on to a third party. Deemed export occurs when information is give to a foreign national (other than a permanent resident) within the United States. Therefore can apply e.g. to foreign university students or interns, docketing systems accessible outside US as well as foreign research programs, joint ventures with foreigners etc.
Export controls apply the acts of all “US persons”, a term defined as including citizens and permanent residents.
In addition to the provisions relating to patent applications noted above, export of technical information is governed by
22 CFR 121-130 (International Traffic in Arms Regulations [ITAR] of the State Department which administers the US Munitions List (USML) authorized under the Arms Export Control Act 22 USC 2278 – 2294) Information covered is set out in 22 CFR 120.10 unless it is in the “public domain” (22 CFR 120.11),
15 CFR parts 730 – 774 (Bureau of Industry and Security of the Department of Commerce which administers the Commerce Control List (CCL) authorized under the International Emergency Economic Powers Act 50 USC 1701- 1706 ) information covered is set out in 15 CFR 772.1 unless it is “publicly available (15 CFR 734.3 -734.10) and
10 CFR Part 810 (regulations of the National Nuclear Security Administration of the Department of Energy relating to the production od special nuclear materials as authorized by the Atomic Energy Act 42 USC 2077) Information covered is set out in 10 CFR 810.3.
Both the State Department and the Department of Commerce regulations also contain exceptions for “fundamental research” – but the definitions need to be looked at carefully (22 CFR 120.11and 15 CFR 734.8. The Department of Commerce regulations also provide for exceptions for information in patent applications if being sent to an inventor for signature and the application contains only foreign-origin information or the inventor was in the United States when the invention was made 15 CFR 734.10.
Whether an export license is required or not depends on how the technology is classified under the USML, the CCL or the Department of Energy regulations.
The USML is set out in 22 CFR 121.1 and classifies controlled technologies in twenty categories: I – firearms, close assault weapons and combat shotguns; II – guns and armament, III – ammunition/ordnance; IV – launch vehicles, guided missiles, ballistic missiles, rockets, torpedoes, bombs and mines; V – explosives and energetic materials, propellants, incendiary
agents and their constituents; VI – vessels of war and special naval equipment.; VII – tanks and military vehicles; VIII – aircraft and associated equipment; IX – military training equipment and training; X – protective personnel equipment and shelters; XI – military electronics; XII – fire control, range finder, optical and guidance and control equipment; XIII – auxiliary military equipment; XIV – toxicological agents, including chemical agents, biological agents, and associated equipment; XV – spacecraft systems and associated equipment; XVI – nuclear weapons, design and testing related items; XVII – classified articles, technical data and defense services not otherwise enumerated; XVIII – directed energy weapons, XX – submersible vessels, oceanographic and associated equipment; and XXI – miscellaneous articles.
Under the CCL (Supplement 1 to Part 774 of the Export Administration Regulations (EAR), technology classified with ane Export Control Classification Number (ECCN) which categorizes items based on the nature of the product, i.e. type of commodity, software, or technology and its respective technical parameters. If an item falls under the jurisdiction of the U.S. Department of Commerce and is not listed on the CCL, it is designated as EAR99. ( it is to be noted that the EAR do not apply to anything subject to ITAR or the Department of Energy regulations) The majority of commercial products are designated EAR99 and generally will not require a license to be exported or reexported, unless export is to an embargoed or sanctioned country (currently Cuba, Iran, North Korea, Sudan, and Syria). Additionally it will not apply if the technology is to be sent to a “party of concern” as specified in Supplement 4 to Part 744 of the EAR or if the end use is prohibited as in the case of certain nuclear end uses as set out in 15 CFR 744.2.
For technologies having an ECCN, country-specific restrictions may apply. The CCL gives an indication for each item listed as to why it is listed, for example using the initials NS for national security concerns, AT for antiterrorism, CC for crime control, and NP for compliance with treaty obligations relating to nuclear proliferation. In the Country Commerce Chart forming Supplement I to 15 CFR Part 738, countries are listed with an indication as to the reasons for products needing a license for export to the country. Therefore if an item has an ECCN indicating that it is of concern for reasons relating to national security, an export license will be required for export to any country listed on the Commerce country chart as being one where national security issue exist.
Penalties for breach of the ITAR are set out 22 CFR 127 and include both civil penalties and the possibility of fines and imprisonment. Penalties for breach of the EAR are set out 15 CFR 764.3 and include both administrative and criminal sanctions. If one finds that one has been in breach, voluntary self disclosure of the breach may help to mitigate the penalty as long as this occurs before any agency of the U.S. government finds out about the breach in some other way. (22 CFR 127. 12(a) and 15 CFR 764.5(a)).