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[Patent_Agent]

This issue pertains to non-US citizens who practice patent law in the USA (e.g., Patent Agents with limited recognition).

While logging the Private PAIR, the following appears:
______
I understand that technology and/or software included in patent applications may be subject to U.S. dual-use export controls, which are set out in the Export Administration Regulations (15 C.F.R. parts 730-774). Access to such technology and/or software by any person located outside the United States or by a foreign national inside the United States constitutes an export that may require a license from the U.S. Commerce Department's Bureau of Industry and Security (BIS). I affirm that I am not accessing or permitting access by others to technology or software in a manner that would violate or circumvent the Export Administration Regulations.

Information regarding U.S. dual-use export controls and their application to technology and software included in patent applications is available from BIS. Please see BIS's website, available at www.bis.doc.gov, or contact BIS's Office of Export Services at 202-482-4811._______

I am a Patent Engineer practicing patent law the USA, and a citizen of India (working on job visa).  Do I need any license?  I do regular EE work for regular clients (not any sensitive work).  Please advise. 

[thought001]

Basically, I believe that you are bound by U.S. export control laws under the governing mandate if the technology you are dealing with is under export control. You need to find out if the technology you are working with is under export control. Therefore, it is not simply whether the technology or information is deemed "sensitive", because there is much sensitive information covered under non-governmental (i.e., private) confidential contractual agreements. But export control is governed by federal laws. One who violates the export control rules, if it is in effect for certain information, is violating federal law, and is subject to penalties under federal law. It is important to know that the ones who allowed the foreign national to get ahold of the information (for any reason) as well as the foreign national, are all subject to the rules and can get into a lot of trouble if these rules are not heeded. The penalties can include imprisonment and major fines. You should look up export control rules to get more of a feeling of what it all means.

As you are probably aware, there are higher security levels beyond export control, such as classified materials, and the rules there are even stricter.

Best of luck.

[patentsusa]

This issue pertains to non-US citizens who practice patent law in the USA (e.g., Patent Agents with limited recognition).

While logging the Private PAIR, the following appears:
______
I understand that technology and/or software included in patent applications may be subject to U.S. dual-use export controls, which are set out in the Export Administration Regulations (15 C.F.R. parts 730-774). Access to such technology and/or software by any person located outside the United States or by a foreign national inside the United States constitutes an export that may require a license from the U.S. Commerce Department's Bureau of Industry and Security (BIS). I affirm that I am not accessing or permitting access by others to technology or software in a manner that would violate or circumvent the Export Administration Regulations.

Information regarding U.S. dual-use export controls and their application to technology and software included in patent applications is available from BIS. Please see BIS's website, available at www.bis.doc.gov, or contact BIS's Office of Export Services at 202-482-4811._______

I am a Patent Engineer practicing patent law the USA, and a citizen of India (working on job visa).  Do I need any license?  I do regular EE work for regular clients (not any sensitive work).  Please advise. 

Correct.  Giving technology to a non-citizen resident in the U.S. is an export. 
http://www.bis.doc.gov/licensing/exportingbasics.htm

[vman11]

Mr. Malhotra,

It would be prudent to do more research before you shoot off such answers to people, particularly when they are in a vulnerable position and are worried about a potential loss of livelihood. Especially since your blanket off the cuff response seems in direct contradiction to the government's position as stated on the website.

"Technology
14. What technologies are subject to the Commerce Department controls?

Generally, technologies subject to the Export Administration Regulations (EAR) are those which are in the United States or of U.S. origin, in whole or in part. Most are proprietary. Technologies which tend to require licensing for transfer to foreign nationals are also dual-use (i.e., have both civil and military applications) and are subject to one or more control regimes, such as National Security, Nuclear Proliferation, Missile Technology, or Chemical and Biological Warfare.

Foreign technology with U.S.-origin technology commingled to a degree above a de minimis level is considered to be subject to the EAR. Technologies which may require an export license are those which are subject to the EAR and which are listed in the Commerce Control List, see Parts 734, 738, and 774 of the EAR.

Some technologies are under the exclusive jurisdiction of another agency of the U.S. government and are not subject to the EAR. These include defense services which are under the jurisdiction of the State Department and technology related to the production of special nuclear materials which is under the jurisdiction of the Energy Department.

Still other technologies do not require any authorization because they are already "publicly available." These include patent applications; publicly available technology and software (other than software and technology controlled as encryption items) that are already published or will be published; technology which arises during or as a result of fundamental research; or technology which is educational. See Part 734 of the EAR for details."

http://www.bis.doc.gov/deemedexports/deemedexportsfaqs.html#21

[MYK]

Still other technologies do not require any authorization because they are already "publicly available." These include patent applications; publicly available technology and software (other than software and technology controlled as encryption items) that are already published or will be published; technology which arises during or as a result of fundamental research; or technology which is educational. See Part 734 of the EAR for details."

The bolded part does not necessarily contradict Mr. Malhotra's statement.  An already-filed patent application is one thing;  information for the purpose of preparing an application is quite another.  I don't think anyone has disputed that an already-published application can be shown freely to anyone.

It's also not clear whether the "already published or will be published" bit applies to the whole sentence or only to the part after the semicolon ("publicly available technology and software");  the semicolon would seem to indicate a separation, and hence a distinction, between "patent applications" and the rest.  It's not likely that someone not involved in preparation would see an application prior to publication, anyway;  the first OA almost always comes out around long after the foreign filing license is automatically granted (statutory maximum of six months unless a secrecy order is entered, but usually indicated as granted on the receipt sent at around six weeks for nonmilitary technologies), and usually after publication (running around 20 months now) as well.

[vman11]

There are many aspects of Mr. Malhotra's casual response which seem misleading.

Correct.  Giving technology to a non-citizen resident in the U.S. is an export. 

The use of of the term "technology" can be construed to cover everything made by man, which does not seem to be the case either.

See quoted para ...

I was annoyed by this simplistic characterization of the situation, which to me, clearly seems flawed.

If that were the case, people wouldn't be able to file patents on wine glass making. After all 'technology' is involved, and glass can be used in all sorts of funky ways, say, making optical tubes for some sort of state of the art imaging technology. Yet, the PTO clearly grants limited recognition to non-citizens.

This cannot be to prevent them from working altogether (see OPs initial post about the nature of technology).

[patentsusa]

Most inventors will go to a patent agent or attorney before their invention is published.  In those cases, there would be an export.  Patent applications are published 18 months after they are filed.  While they are being prepared, this exclusion you mention would not apply.  There is a reason why that warning exists on the USPTO website, and it is described here:

http://www.exportrules.com/

It would be possible for the client to consider the technology and determine whether an export permit is required before transmitting each disclosure to a foreign national.  A simpler solution would be to draft patent applications for foreign originated inventions.

Still other technologies do not require any authorization because they are already "publicly available." These include patent applications; publicly available technology and software (other than software and technology controlled as encryption items) that are already published or will be published; technology which arises during or as a result of fundamental research; or technology which is educational. See Part 734 of the EAR for details."

http://www.bis.doc.gov/deemedexports/deemedexportsfaqs.html#21

[vman11]

Assuming the information is export sesitive, such consideration seems prudent.

Note THE singular critical difference between the OPs post and your response. He/ she takes the trouble to clarify that he /she works on run of the mill stuff. You respond by saying that because he/ she deals with any technology at all he/ she requires some form of an export license. What is the basis for this conclusion? 

[patentsusa]

Assuming the information is export sesitive, such consideration seems prudent.

Note THE singular critical difference between the OPs post and your response. He/ she takes the trouble to clarify that he /she works on run of the mill stuff. You respond by saying that because he/ she deals with any technology at all he/ she requires some form of an export license. What is the basis for this conclusion? 

My original answer was that an export does occur when technology is transferred to a foreign national within the U.S.  This is correct regardless of the technology. 

Whether or not an export license is a separate question.  The answer depends on the ECCN for the technology.  Much seemingly run of the mill technology is actually dual-use technology.  The practical problem is who is going to do the classification?  If it is the person drafting the patent application, then the export has taken place before a determination was made as to whether or not an export license was required.  If you are leaving it up to the client, are they really going to follow these complicated rules? 

[Isaac]

If you are leaving it up to the client, are they really going to follow these complicated rules? 

If the client exports, then the client faces the criminal charges.  They'd better follow the rules. 

Your making something simple seem impossible.  You don't need a patent lawyer to make the determination.

[Patent_Agent]

Thanks for all your opinions; it really helped me understand the issue I am currently facing.

So, in your opinion, what is the bottom-line?  If I am a non-US citizen, regularly draft and prosecute patent applications in general EE/CS field (not remotely related to national security), do I require a export regulation license? 

[vman11]

Who knows what the right answer is to your question. It's like saying, should I wake up and cross the road today, I may get hit by a bus. The answer would depend on which road you are crossing at what time etc etc.

There are numerous people with limited recognition working in the US in lawfirms and inhouse across the country.

One would think that if one believes the nature of matter may be sensitive or inadvertently stumbles across something one thinks is sensitive, one raises their hand immediately, passes it on to somebody else in the organization to handle, or gets an export license. That simple.

Having come across defense related stuff in the past, I can tell you that I really don't understand the rules. But, 'export sensitive' information is really a crap shoot. There have been occasions where one can see part of the stuff, but not some other parts. Also, there's some stuff about export licenses being project specific. That is, one gets cleared for each individual thing one works on, again I'm no expert.

[Isaac]

Thanks for all your opinions; it really helped me understand the issue I am currently facing.

So, in your opinion, what is the bottom-line?  If I am a non-US citizen, regularly draft and prosecute patent applications in general EE/CS field (not remotely related to national security), do I require a export regulation license? 

You appear to be asking about an export license as if it were something like a visa or security clearance.  An export license is not a personal thing, so you cannot obtain one for yourself. 

[bardencj]

It's worth pointing out, too, that "draft[ing] patent applications for foreign originated inventions" is likely to be covered in some way by EAR as well.  Consider that if the client is a foreign national or residing abroad, supplying the draft of the patent to your client for review and approval constitutes an export.  Even if it is "just" telling her what she obviously already knows, if it a) involves a potentially dual-use technology and b) is not yet publicly available, then you may require an export license even to return a draft to your client.

I face this issue routinely, because I am a US citizen patent agent with a home office in another country.  Every time I log in to Private PAIR even to read a file wrapper, I get the same verbiage on export controls as someone logging in domestically.  The difference is that every non-published application in which I click to read part of the file wrapper, electronically crosses borders.  Which means everything is an export.

From a compliance perspective, an export permit is usually not required provided the technology does not fall into a classification listed in EARs as requiring such a permit, given the foreign national/country in question.  Since most of my clients are American or Canadian, and because my usual area of practice has very few dual-use technologies, I have satisfied myself that most every export is EAR99 / NLR or has controls that do not apply to Canadians.  If I am unsure because of the nationality of the inventor or the technology is not typical of my practice, then I check again.

I am not a lawyer and certainly don't have significant expertise on the EARs, but this seems to me to be a prudent practice for any non-resident or limited recognition agents/attorneys.

[Patent_Agent]

Has any Patent Agent/Attorney/Engineer, who is not a US citizen/permanent resident and working on a job visa in the USA, ever applied for a export license for practicing patent prosecution in the US?  It would be great if you can share your experience here (or you can share it privately with me if you so prefer).  I am really worried about possibilities of applying for a license, or jeopardizing my career.  Thanks...