National emergencies, like the one COVID-19 has triggered in the United States, spur technological development, as concerned researchers look for ways to repurpose existing technology or develop new technology to help. Researchers’ first instinct is often to publish their developments as soon as possible, but they must be cognizant of the downstream effects this disclosure may have. A researcher may have underlying contractual or legal obligations that prevent publication of the information; these obligations may also arise if their developments relate to national security or an ongoing national emergency. Disclosure to non-U.S. citizens within the country and disclosures outside the United States can violate certain technology export control laws. Inventors must proceed carefully when they disclose their developments, and they should consider filing a domestic patent application first to let the U.S. government evaluate the disclosure’s relevance to national security. Receiving a foreign filing license can also insulate an inventor from fines and imprisonment and demonstrate a desire to comply with technology export controls.
Technology Developed as an Employee or Under Contract
Inventors will typically be aware of their contractual obligations, which may restrict certain rights, including the right to publish. Restrictions on publication may also arise out of exposure to confidential information or the receipt of materials under a material transfer agreement. Employees should familiarize themselves with the requirements in their employment agreements, and consider the source of information or materials that led to the discovery at issue. They should also consult company policies on the publication of technical advancements.
Technology Developed With a U.S. Government Grant
Grant recipients have obligations regarding the disclosure of their research, and these obligations vary by granting agency. Recipients should familiarize themselves with the requirements set forth in their contracts, especially because the processes for obtaining disclosure approval vary greatly from agency to agency. Individuals performing grant-funded research must also consider the obligations described below.
Technology Developed Without a U.S. Government Grant
Many researchers fail to understand that they can be subject to legal obligations even while working outside a government grant. Federal law controls the export of technology from the United States, permits the government to apply secrecy orders to any technology for which a patent is sought, and sets forth requirements for filing patent applications outside the United States.
Many researchers understandably want to rush to disclose their research for the public’s benefit during national emergencies like the one the United States is currently facing with COVID-19. Before publishing, they should consider whether the disclosure (1) is considered “exporting” the information and (2) is subject to U.S. export controls.
In the United States, any technology export could be subject to foreign asset control regulations,1 International Traffic in Arms Regulations (ITAR),2 Export Administration Regulations (EAR),3 and other agency-specific regulations. Foreign asset control regulations (i.e., trade or economic sanctions) govern the transfer of money or assistance to specifically enumerated individuals and groups. ITAR prohibits the export of “defense articles” and “defense services” as set forth in the U.S. Munitions List (USML) without a license.4 EAR prohibits, in part, the export of “dual-use” items (i.e., items having both civilian and military uses) without a license.5 The disclosure and export of some technologies is governed through other agency regulations.6
Most individuals would understand an export to include shipping an item from the United States, but “exports” under ITAR and EAR also include transferring information related to covered technology to a non-U.S. person.7 In other words, one can violate ITAR or EAR by transferring information to any non-U.S. person, even if the recipient is located within the United States. Although individuals who publish their research online might not think of that publication as an “export,” that publication “releases” the information to non-U.S. persons and could be construed as an export under ITAR and EAR. Therefore, any information originating from the United States that is released publicly could be subject to ITAR and EAR if it pertains to technology covered by those laws.
ITAR and EAR have important carve-outs for researchers. EAR provides an exception for technology resulting from “fundamental research.”8 ITAR likewise provides an exception for “general scientific, mathematical, or engineering principles commonly taught in schools, colleges, and universities, or information in the public domain.”9 Despite these carve-outs, researchers should understand that U.S. law can prevent the public disclosure of technology, even if the technology is developed without government funding. Inventors should consider whether the information they are disclosing is covered by ITAR, EAR or other export control regulations.
Another common instinct researchers have during a national emergency is to file patent applications on their technology before any public disclosure. While this is a safer approach, inventors should understand (1) how a national emergency might affect their ability to publicly disclose an invention and (2) foreign filing license requirements and related restrictions on international patent filings.
Federal law allows the U.S. Patent and Trademark Office (USPTO) to apply a secrecy order to any patent application if the USPTO or an interested government agency determines that disclosure of the subject matter would be detrimental to national security, regardless of whether the federal government has a property interest in the patent application.10 The USPTO reviews every new patent application to determine whether a secrecy order should be applied.11 Secrecy orders are relatively rare,12 but, when one is applied, the patent application will not publish or issue during the term of the secrecy order, the applicant’s ability to obtain foreign patents will be severely limited, and the applicant cannot publish or otherwise disclose the subject matter of the patent application.13 Violation of a secrecy order is punishable by a fine, imprisonment or both.14 Although applicants can appeal secrecy order determinations, these appeals are difficult and time-consuming. Secrecy orders are renewed annually until publication of the underlying information is no longer deemed a threat to national security.15 Compensation is generally available to entities deprived of patent protection because of a secrecy order.
Since the onset of COVID-19, governments around the world have been desperately searching for treatments,16 and the pandemic has national defense implications.17 The secrecy order statute applies when the disclosed technology would be detrimental to national security “in the opinion” of the USPTO or an interested government agency. In other words, a national emergency could change the scope of technology to which secrecy orders may be applied. The USPTO could, for example, consider any COVID-19-related inventions important to the national defense and apply a secrecy order. Although the USPTO has not yet suggested that it will do so, applicants with filings related to any ongoing national emergency must understand that the U.S. government has this power.
Foreign Filing Licenses
Under U.S. law, a foreign filing license is required to file a foreign patent application on any invention made in the United States if fewer than six months have passed since a U.S. patent application was first filed.19 The USPTO will grant a foreign filing license unless a secrecy order has been applied. Foreign filing licenses are for the limited purpose of preparing and filing foreign patent applications, and do not satisfy an applicant’s duty to comply with ITAR, EAR and other export controls.20
If a U.S. patent application is subject to a secrecy order, the applicant cannot file any corresponding foreign patent applications. If the applicant mistakenly assumed he or she would receive a foreign filing license and began negotiating licenses or funding based on that assumption, the USPTO’s refusal to grant the license could create substantial issues. Secrecy orders also hamper requests for retroactive foreign filing licenses. Generally, if an applicant files a foreign patent application on technology developed in the United States without first obtaining the necessary foreign filing license, the applicant can request a retroactive foreign filing license to correct the defect.21 The USPTO routinely grants retroactive licenses to remedy innocent mistakes. However, if a U.S. patent application is subject to a secrecy order, there is no mechanism for correcting the failure to obtain a foreign filing license. The penalties for failing to obtain a foreign filing license include invalidating any resulting U.S. patent, fines and possible imprisonment.22
Researchers developing technology related to an ongoing national emergency need to understand that they could be denied a foreign filing license, and should take steps to prevent careless international patent filings. Researchers developing such technology should file a U.S. application as soon as practicable to either obtain a foreign filing license or, if they are denied a license, adjust their patent filing strategy accordingly.
Researchers must be keenly aware of the potential restrictions on publication of their inventions, including those arising from employment agreements, funding arrangements and industry-specific regulations. They should always, of course, comply with any disclosure or patent filing obligations from government grants. Individuals working on technology in the United States related to a national emergency need to be cognizant of the separate, but overlapping, export control and foreign filing license regimes governing the dissemination of their technology. Before rushing to disclose their developments, inventors should file a domestic patent application to let the U.S. government evaluate the disclosure’s relevance to national security. Anyone developing technology related to an ongoing national emergency should work with counsel to ensure compliance with contractual obligations and export control regulations, and to develop an appropriate patent strategy.
1 31 C.F.R. § 500 et seq.
2 22 C.F.R. § 120 et seq.
3 15 C.F.R. § 730 et seq.
4 22 C.F.R. § 121.1. The “defense articles” listed in the USML include munitions, tanks, military aircraft, missile guidance systems, and other technology that would self-evidently be related to national defense. But they also include a wide range of other technology, including some cryptographic systems, enumerated nerve agents, enumerated biological agents, underwater single acoustic sensor systems that are capable of distinguishing nonbiologic tonals, some types of infrared imaging systems, and some types of Global Navigation Satellite System equipment.
5 The list of dual-use items is set forth on the Commerce Control List (CCL). The CCL is available at https://www.bis.doc.gov/index.php/documents/regulations-docs/2329-commerce-control-list-index-3/file. The EAR is not limited solely in application to “dual-use” items; it is broadly applicable to all items located in or originating from the United States, as set forth in 15 C.F.R. § 734.3, and may require an export license for items not found on the CCL depending on embargoes, sanctions, receiving party, or the end use of the exported technology.
6 For example, the Nuclear Regulatory Commission controls the export of nuclear materials and equipment, and the Department of Energy controls the export of nuclear technology and technical data.
7 See 22 C.F.R. § 120.17 (defining “export” under ITAR as “releasing or otherwise transferring technical data to a foreign person in the United States”) and 15 CFR § 734.13 (defining “export” under EAR as “releasing or otherwise transferring ‘technology’. . . to a foreign person in the United States”). This is called the “deemed export” rule.
8 15 C.F.R. § 734.8. Note that “fundamental research” is defined as “research in science, engineering, or mathematics, the results of which ordinarily are published and shared broadly within the research community, and for which the researchers have not accepted restrictions for proprietary or national security reasons.” 15 C.F.R. § 734.8.(c) (emphasis added).
9 22 C.F.R. § 120.10(b).
10 35 U.S.C. § 181.
11 See M.P.E.P. § 115.
12 447,905 utility, plant and reissue patent applications were filed in FY 2019, and only 88 secrecy orders were applied. See USPTO Patent Public Advisory Committee 2019 Annual Report, pg. 7 at https://www.uspto.gov/sites/default/files/documents/PPAC_2019_Annual_Report.pdf and FN 14.
13 35 U.S.C. §§ 181 and 184.
14 35 U.S.C. § 186.
15 35 U.S.C. § 181.
16 See, e.g., “Coronavirus: Anger in Germany at Report Trump Seeking Exclusive Vaccine Deal,” https://www.theguardian.com/world/2020/mar/16/not-for-sale-anger-in-germany-at-report-trump-seeking-exclusive-coronavirus-vaccine-deal.
17 See, e.g., “COVID-19 is Attacking Our Defense Supply Chains and Our Nation’s Security,” https://thehill.com/opinion/national-security/489375-COVID-19-is-attacking-our-defense-supply-chains-and-our-nations.
18 35 U.S.C. § 184. Many other countries have similar requirements. The Word Intellectual Property Organization provides a summary of the foreign filing license requirements in a variety of different member countries: https://www.wipo.int/pct/en/texts/nat_sec.html.
19 M.P.E.P. § 140.
20 See 37 C.F.R. § 5.15.
21 See 37 C.F.R. § 5.25.
22 See 35 U.S.C. §§ 182, 185 and 186.