U.S. Treasury Issues Clarification Expressly Authorizing Certain Patent, Trademark, and Copyright Transactions in Russia

The U.S. Department of Treasury, Office of Foreign Assets Control, has issued much-needed guidance on the effect of Russian sanctions on efforts to obtain or maintain, patent, trademark, copyright, or other intellectual property protection in Russia.

General License 31 (Authorizing Certain Transactions Related to Patents, Trademarks, and Copyrights) expressly clarifies that the following will NOT be in violation of the Russian Harmful Foreign Activities Sanctions Regulations, 31 C.F.R. §587:

• filing (and prosecuting) an application for patent, trademark, copyright, or other intellectual property protection in Russia;
• receiving a patent, trademark, copyright, or other form of intellectual property protection;
• the renewal or maintenance of a patent, trademark, copyright registration, or other form of intellectual property protection; or
• 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 defending such a proceeding.

Certain banking prohibitions will remain in effect, however; e.g. opening or maintaining a correspondent account or payable-through account for or on behalf of foreign financial institutions subject to sanctions and a debit to an account on the books of a U.S. 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. The specifics of General License 31, as well as 31 C.F.R. §587, should be consulted for further banking information.

Even if you are not currently doing business in Russia, consideration should be given to maintaining existing Russian patents, trademark, and copyright registration, and prosecuting to issuance applications for such protection. There have been reports of unscrupulous actors rushing to try and obtain trademark registrations and other intellectual property of businesses who have temporarily ceased operations in Russia, voluntarily or due to the sanctions.

If you have any questions about the information in this alert, please contact Marsha Gentner or your Dykema relationship attorney.