Update and Clarification on U.S. Sanctions Against Russia as Relates to Intellectual Property

May 9, 2022

This is an update of our March 24, 2022 blog regarding the effects of U.S. sanctions on Russia as it affects U.S. owned intellectual property (IP) assets in Russia. On May 5, 2022, the U.S. Department of Treasury issued General License No. 31 (GL31), which authorizes the following activities regarding procurement and maintenance of IP through the Russian Patent Office (“Rospatent”):

  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.

GL31 also states the authorized activities are subject to the other prohibitions set forth in:

  1. Directive 2 under Executive Order (E.O.) 14024;
  2. General License 13 (GL13); and
  3. E.O. 14066 and 14068

By issuing GL31, the U.S. Treasury Department has clarified the interpretation of previously issued GL13 (March 2, 2022), by specifically authorizing legal transactions to procure, maintain and protect U.S. owned IP assets, many of which require the payment of fees to the Rospatent. Thus, GL 13 allows U.S. persons to instruct foreign associates, who practice before Rospatent, to pay fees associated with the authorized transactions above.

We will continue to keep you apprised of future developments.

Hoffmann & Baron, LLP is a full-service law firm specializing in all areas of intellectual property, both domestically and internationally, since 1984. We safeguard intellectual property assets through procurement, litigation, counseling, opinions and licensing. What sets us apart is our personalized attention and ability to customize our services to fit the requirements of each client. Hoffmann & Baron, LLP has offices in New York, New Jersey and Washington D.C.