Sharing and Licensing Intellectual Property

What is the risk?

The U.S. Government is concerned about transfers of U.S. government-funded or internally funded export sensitive intellectual property (IP) that may be transferred directly to international parties or indirectly through commercialization programs. While technology which is placed into the public domain (e.g., either through patent filing, publication or conference presentation) falls outside the scope of the export control regulations, proprietary technology which is the result of fundamental research (e.g., proprietary “know-how”) which is neither in the public domain nor intended for publication is subject to export control regulations.

As with any commercial vendor, commercial licensing of university-patented IP triggers required restricted party screening requirements to ensure that the transaction does not result in the transfer of technology to a party listed on the on one of the U.S. Government’s restricted party lists.

In parallel, CFIUS (Committee on Foreign Investment in the U.S.) regulations require notification of international investments into the University that could trigger the transfer of critical technologies by the university to that investing entity. 

FIU’s Response:

Our Technology Management and Commercialization department within ORED coordinates Invention Disclosure reviews with our Export Control department as needed and routinely conducts restricted party screening on new commercial licensees. As part of our visaed foreign national-onboarding program, Export Control also coordinates reviews as necessary to ensure that any proprietary IP is safeguarded by agreement (when not otherwise protected under an FIU employment contract.) FIU Global and the Office of General Counsel review all international agreements that concern incoming investments or contributions that could potentially result in an outbound technology transfer or sharing.

If you have any questions concerning IP transfers, please contact the Technology Management and Commercialization department within ORED or Export Control for further information.