Authorization of certain IP-related transactions in Russia

The ink was not even dry on the update regarding Russia-related IP issues that we published last week, when we learned of two more major developments.

The USPTO recently issued the following statement on engagement with Russia, the Eurasian Patent Organization and Belarus:

Per guidance issued by the U.S. Department of State, the United States Patent and Trademark Office (USPTO) has terminated engagement with officials from Russia's agency in charge of intellectual property, the Federal Service for Intellectual Property (commonly known as Rospatent), and with the Eurasian Patent Organization. The USPTO has also terminated engagement with officials from the national intellectual property office of Belarus. Like so many, we are deeply saddened by the events unfolding in Ukraine. We hope for the restoration of peace and human dignity. 

Effective March 11, 2022, the USPTO will no longer grant requests to participate in the Global Patent Prosecution Highway (GPPH) at the USPTO when such requests are based on work performed by Rospatent as an Office of Earlier Examination under the GPPH. In addition, in pending cases in which, prior to March 11, 2022, the USPTO granted special status under the GPPH to applications based on work performed by Rospatent, the USPTO will remove that status and return those applications to the regular processing and examination queue, meaning that they will no longer be treated as GPPH applications at the USPTO.

As anticipated, on May 5, 2022, the U.S. Department of the Treasury Office of Foreign Assets Control revised the "Russian Harmful Foreign Activities Sanctions Regulations" 37 CFR part 587, by issuing General License No. 31 entitled "Authorizing Certain Transactions Related to Patents, Trademarks and Copyrights," which clarifies that U.S. IP rights owners may continue to pursue, own, maintain and attempt to enforce or defend IP rights in Russia, so long as they do not facilitate payment through sanctioned financial institutions. 

General License No. 31 states:

1. Except as provided in paragraph (b) of this general license, the following transactions in connection with a patent, trademark, copyright, or other form of intellectual property protection in the United States or the Russian Federation that would be prohibited by the Russian Harmful Foreign Activities Sanctions Regulations, 31 CFR part 587 (RuHSR), are authorized:
   1. The filing and prosecution of any application to obtain a patent, trademark, copyright, or other form of intellectual property protection;
   2. The receipt of a patent, trademark, copyright, or other form of intellectual property protection;
   3. The renewal or maintenance of a patent, trademark, copyright, or other form of intellectual property protection; and
   4. The filing and prosecution of any opposition or infringement proceeding with respect to a patent, trademark, copyright, or other form of intellectual property protection, or the entrance of a defense to any such proceeding.
2. This general license does not authorize:
   1. The opening or maintaining of a correspondent account or payable-through account for or on behalf of foreign financial institutions determined to be subject to the prohibitions of Directive 2 under Executive Order (E.O.) 14024, Prohibitions Related to Correspondent or Payable-Through Accounts and Processing of Transactions Involving Certain Foreign Financial Institutions;
   2. Any debit to an account on the books of a U.S. financial institution of the Central Bank of the Russian Federation, the National Wealth Fund of the Russian Federation, or the Ministry of Finance of the Russian Federation; or
   3. Any transactions prohibited by E.O. 14066 or E.O. 14068.

We will continue to monitor and provide updates as we learn of them.  For a more fulsome overview of US sanctions laws and regulations, please click here.