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 falls outside the scope of the export control regulations, proprietary technology which is neither in the public domain nor intended for publication is subject to export control regulations. The U.S. government is also concerned about certain “emerging technologies” which may not yet be export controlled but which in the course of technology transfer confer a competitive advantage to a foreign interest.
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.
IP transfers that involve personal information may be restricted for certain countries. Executive Order 14117 "Preventing Access to Americans' Bulk Sensitive Personal Data and United States Government-Related Data by Countries of Concern" (the "Order") applies to China (including Hong Kong and Macau), Cuba, Iran, North Korea, Russia and Venezuela, as well as individuals and entities under their control, and prohibits or restricts transactions involving certain types of data with six countries of concern and establishes thresholds defining "bulk" data based on the number of U.S. persons whose information is included in a given transaction.
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.