by Katelyn Shindler (New York)
In light of the Russian invasion of Ukraine which began in February 2022, the United States Patent and Trademark Office (USPTO) announced on March 22, 2022 that it will no longer be associating itself with the Federal Service for Intellectual Property known as Rospatent. They further stated they will be cutting ties with officials from the Eurasian Patent Organization (EAPO) and the national intellectual property office of Belarus, which have been known to have a relationship with Russia as well. See USPTO official March 22nd statement here.
In like manner, the USPTO stated that effective March 11, 2022, they will no longer authorize requests to participate in the Global Patent Prosecution Highway (GPPH) , a fast-track system of examining patent applications where applicants who receive a ruling from their first patent office that at least one claim on their application is allowable may request an accelerated examination of the corresponding claims, if the requests are based on work performed by Rospatent as an office of earlier examination. Such applications will no longer be treated as GPPH applications at the USPTO and will be returned to the regular processing queue.
Despite this earlier statement, on May 5, 2022 the USPTO announced that the U.S. Department of Treasury’s Office of Foreign Assets Control, responsible for enforcing economic and trade sanctions based on U.S. foreign policy and national security, published General License No. 31 which now authorizes the below transactions related to intellectual property protection in the United States and the Russian Federation:
- The filing and prosecution of any application to obtain a patent, trademark, copyright, or other form of intellectual property protection;
- The receipt of a patent, trademark, copyright, or other form of intellectual property protection;
- The renewal or maintenance of a patent, trademark, copyright, or other form of intellectual property protection; and
- 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.
Regardless of these new allowances, General License No. 31 does not authorize any opening, maintaining, or making debits to any 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, in accordance with the provisions of Executive Order 14024. Additionally, imports of prohibited products, such as fish, seafood, alcoholic beverages, non-industrial diamonds, and any other products of Russian Federation origin, into the United States remain unauthorized under Executive Orders 14066 and 14068.
As of June 1, 2022, the USPTO notified Rospatent of its intent to terminate their agreement concerning Rospatent serving as International Searching Authority (ISA) and International Preliminary Examining Authority (IPEA) for international patent applications received by the USPTO. This termination will be effective beginning December 1, 2022 and the USPTO advises applicants to be wary of selecting Rospatent as an ISA or IPEA. See USPTO official June 1st statement here.
While the USPTO’s recent announcements will help intellectual property holders and their attorneys better understand the exceptions to the March 11th ban, General License No. 31’s prohibition of certain monetary transactions with Russian financial institutions and Rospatent’s current status nevertheless complicate its relations with the USPTO.
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