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Patent Application Process Must Be Compliant with U.S. Export Controls

Client Alert | 2 min read | 08.25.08

Commerce Reinforces the Need for Export Compliance in Patent Transactions. The Department of Commerce – through the U.S. Patent & Trademark Office (USPTO) and the Bureau of Industry and Security (BIS) – is reaching out to patent applicants and practitioners in several ways to ensure compliance with U.S. export control obligations relevant in the patent context.

Since late 2007, BIS has required users of the USPTO's EFS-Web to certify that their use of this system does not "violate or circumvent" the Export Administration Regulations (EAR), which BIS administers. More recently, the USPTO extended the certification requirement to include users of the Private PAIR system. The certification is intended to ensure that foreign nationals, whether in the United States or another country, are not given unauthorized access to technology that is controlled under the EAR. The certification may be new, but the EAR has long governed the release of controlled technology to foreign nationals.

This issue came to light when the USPTO realized that providing electronic access to the PAIR system could result in an export regardless of whether the applicant was in compliance with the EAR. Requiring certification makes the responsibility to comply more conspicuous in the patent application process.

Exports of controlled technology in patent transactions have gained importance of late as U.S. companies are increasingly outsourcing various functions – including patent-related activities – to offshore service providers. The USPTO recently issued a notice in the Federal Register addressing this issue, in which it reminded applicants of the EAR's controls and clarified the scope of what may be exported pursuant to a USPTO foreign filing license. Specifically, foreign filing licenses only permit the export of the exact scope of technology that has been included as part of a U.S. patent application (or a petition for a foreign filing license), and only for purposes related to the preparation, filing or possible filing, or prosecution of a foreign patent application. Exports of technology for other purposes, including preparation or filing of U.S. patent applications, as well as releases of technology to foreign nationals via databases and other electronic systems located in the United States, licensing of any of the technology to third parties, and internal corporate collaboration or development, must comply with the EAR. Thus, U.S. companies employing foreign nationals, as well as multi-national corporations, should ensure that protections are in place to comply with U.S. export controls throughout the entire patent preparation and prosecution process.

Click to review the Federal Register notice.

Insights

Client Alert | 5 min read | 12.12.25

Eleventh Circuit Hears Argument on False Claims Act Qui Tam Constitutionality

On the morning of December 12, 2025, the Eleventh Circuit heard argument in United States ex rel. Zafirov v. Florida Medical Associates, LLC, et al., No. 24-13581 (11th Cir. 2025). This case concerns the constitutionality of the False Claims Act (FCA) qui tam provisions and a groundbreaking September 2024 opinion in which the United States District Court for the Middle District of Florida held that the FCA’s qui tam provisions were unconstitutional under Article II. See United States ex rel. Zafirov v. Fla. Med. Assocs., LLC, 751 F. Supp. 3d 1293 (M.D. Fla. 2024). That decision, penned by District Judge Kathryn Kimball Mizelle, was the first success story for a legal theory that has been gaining steam ever since Justices Thomas, Barrett, and Kavanaugh indicated they would be willing to consider arguments about the constitutionality of the qui tam provisions in U.S. ex rel. Polansky v. Exec. Health Res., 599 U.S. 419 (2023). In her opinion, Judge Mizelle held (1) qui tam relators are officers of the U.S. who must be appointed under the Appointments Clause; and (2) historical practice treating qui tam and similar relators as less than “officers” for constitutional purposes was not enough to save the qui tam provisions from the fundamental Article II infirmity the court identified. That ruling was appealed and, after full briefing, including by the government and a bevy of amici, the litigants stepped up to the plate this morning for oral argument....

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