Treasury Department Issues General License Authorizing Certain Patent, Trademark, and Copyright Transactions | McDonnell Boehnen Hulbert & Berghoff LLP

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On March 2, 2022, the Office of Foreign Assets Control (“OFAC”) of the United States Department of the Treasury issued General License No. 13which authorized “US persons . . . to pay taxes, fees, or import duties, and to purchase or receive permits, licenses, registrations, or certifications” for a limited time when such activities relate to transactions involving the Central Bank of the Russian Federation (“Bank of Russia”) and to the extent such activities would otherwise be prohibited by Directive 4 under Executive Order (EO) 14024 (to seeThe Treasury Department allows transactions involving the Bank of Russia until June 24, 2022“). According to General License No. 13, transactions that “are usually incidental and necessary for the day-to-day operations of such persons in the Russian Federation” were permitted “until 12:01 a.m. Eastern Daylight Time on 24 June 2022.”

Guideline 4 of OFAC, which was published on February 2, 2022, states that “the director of the Office of Foreign Assets Control has determined, in consultation with the State Department, that the Central Bank of the Russian Federation, the Fund National Wealth of the Russian Federation and the Ministry of Finance of the Russian Federation are political subdivisions, agencies or bodies of the Government of the Russian Federation.” Accordingly, the directive states that:

[T]The following activities of a U.S. Person are prohibited except to the extent required by law, or unless licensed or otherwise authorized by the Office of Foreign Assets Control:

any transaction involving the Central Bank of the Russian Federation, the National Wealth Fund of the Russian Federation or the Ministry of Finance of the Russian Federation, including any transfer of assets to these entities or any foreign exchange transaction for or on behalf of these entities.

The directive also prohibits the following:

(1) any transaction that evades or avoids, is intended to evade or avoid, violates or attempts to violate any of the prohibitions in this guideline; and (2) any conspiracy formed to violate any of the prohibitions in this guideline.

In a USPTO Alert email distributed to stakeholders and posted on the Agency’s website last week, the U.S. Patent and Trademark Office noted that OFAC had published General License No. 31, which, according to the USPTO, “allows certain intellectual property transactions in Russia, including the filing and prosecution of any patent, trademark, or copyright application , as well as renewal and maintenance costs”. The Agency also noted that any questions regarding General License No. 31 should be directed to OFAC at OFAC_Feedback@treasury.gov.

General License No. 31 provides that the following transactions related to the protection of intellectual property in the United States or the Russian Federation – which would otherwise be prohibited under Russia’s Harmful Foreign Activity Sanctions Regulations, 31 CFR part 587 — are permitted (except as provided in Part (b) of the General License):

(1) The filing and prosecution of any application for a patent, trademark, copyright or any other form of intellectual property protection;

(2) Receipt of patent, trademark, copyright or other form of intellectual property protection;

(3) The renewal or maintenance of any patent, trademark, copyright or other form of intellectual property protection; and

(4) The filing and prosecution of any opposition or infringement proceedings with respect to a patent, trademark, copyright or other form of property protection intellectual property, or the introduction of a defense in such proceedings.

Part (b) of General License No. 31 does not do not to allow:

(1) Opening or maintaining a correspondent account or transit account for or on behalf of foreign financial institutions determined to be subject to the prohibitions of Directive 2 under Executive Order (EO) 14024 , Correspondent or transit prohibitions Accounts and transaction processing involving certain foreign financial institutions;

(2) Any debit to an account in the books of a US 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 transaction prohibited by EO 14066 or EO 14068.

According to the Treasury Department Directive 2 under Executive Order (EO) 14024, the prohibitions in this guideline “apply only to the opening or maintenance by a U.S. financial institution of a correspondent account or transit account for or on behalf of a foreign financial institution, or processing a transaction involving a foreign financial institution”. A copy of Executive Order 14066, titled “Prohibition of Certain Imports and New Investments as Part of the Russian Federation’s Continued Efforts to Undermine the Sovereignty and Territorial Integrity of Ukraine”, can be found here. A copy of Executive Order 14068, titled “Prohibiting Certain Imports, Exports, and New Investments with Respect to Continued Aggression by the Russian Federation,” can be found here.

In its Daily News email last Friday, the Intellectual Property Owners Association (IPO) noted that General License No. 31 “clarifies previously issued General License No. 13, which did not determine whether these payments constituted “authorized payments for registrations, certifications and licenses”. to conduct day-to-day operations” or were prohibited by Russia’s Harmful Foreign Activities Sanctions Regulations.”

For more information on this and other related topics, please see:

• “The Treasury Department allows transactions involving the Bank of Russia until June 24, 2022“, April 10, 2022
• “Briefs from the USPTO“, April 4, 2022
• “USPTO Provides Guidance Regarding Transactions with Rospatent“, March 22, 2022
• “Georgian and Estonian patent offices join other IP offices in expressing support for Ukraine“, March 13, 2022
• “Several law firms are closing offices in Russia“, March 13, 2022
• “Russia allows unpaid use of certain patents without the consent of the patent owner“, March 11, 2022
• “Lithuanian Patent Office and EUIPO join other patent offices in expressing support for Ukraine“, March 10, 2022
• “USPTO Terminates PPH with Rospatent and Terminates Engagement with NCIP“, March 10, 2022
• ” Life sciences business leaders call for immediate and complete economic disengagement from Russia“, March 9, 2022
• “PRH joins other patent offices in expressing support for Ukraine“, March 9, 2022
• “USPTO Ends Engagement with Rospatent and EAPO“, March 7, 2022
• “Ukrpatent continues normal operations despite Russian aggression“, March 6, 2022

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