Recently, the U.S. government has exhibited increased concern around U.S. generated Intellectual Property (IP) that is inappropriately passed to foreign entities. Such transfers may occur during the course of a research project proposal, project or thesis review, or publication review. At times, foreign entity review may be predicated on a researcher’s willingness to share non-public information.

1.  Overview on IP Rights Outside of the US

Intellectual property refers to innovations that the law protects from unauthorized use by others. Main forms of IP include patents, copyrights, trademarks, and trade secrets. In an international research setting, IP filings are made to protect innovations like: drugs, devices, software codes, curriculum, reagents, and data. The first step to protecting IP is to disclose it to UMass Chan. Faculty and staff should disclose Intellectual Property that may need to be protected through BRIDGE/Office of Technology Management. https://www.umassmed.edu/bridge/contact-us/

2.  Licensing and the Fundamental Research Exclusion

Most of the time IP developed at UMass Chan is the result of “Fundamental Research ” and, as such, is not subject to export regulations and can be shared without issue. However, some IP is the product of restricted research and is subject to control. If the research does not qualify for the Fundamental Research Exemption (FRE), the following transactions require review:

• Allowing foreign persons (including other UMass Chan personnel) to review an internal IP disclosure, where the subject technology is the product of restricted research
• Sharing provisional and/or unpublished patent applications with a foreign person (whether in US or overseas), where the subject technology is the product of restricted research
• Discussing restricted IP with a foreign collaborator or potential licensee
• Sharing an Invention Disclosure or other IP-marketing material with a foreign person, where the subject technology is the product of restricted research
• Licensing restricted IP to a foreign person or entity
• Licensing IP (restricted or unrestricted) to a Restricted Party

Researchers who license IP, including IP that is the product of Fundamental Research, must be cautious about further technology development when that technology is developed with or for a corporate licensee. Often such development is subject to restrictions on publication and is therefore Restricted Research (even if the original technology qualified as Fundamental Research). Researchers can work with OTM and the Export Control Office to ensure that future development of technology does not unknowingly implicate export controls.

3.  SOPs to Properly Share IP

To avoid inadvertent violation of export control regulations, please work through the following steps BEFORE sharing UMass Chan IP with a foreign person or entity. Should you have any questions – please contact internationalsupportservices@umassmed.edu.

• Ensure that the proposed recipient and/or licensee is not a Restricted Party. Contact exportcontrol@umassmed.edu to request a screen.
• Work with OTM to ensure that IP is properly identified and documented
• Determine whether the IP is the result of Fundamental Research. If NOT fundamental research, we must then determine the jurisdiction and classification of the technology.
  • Contact ISS in case of questions
• Work with ISS to verify that restricted IP may be licensed and/or transferred to the recipient without an export license.