• videocam On-Demand Webinar
  • signal_cellular_alt Intermediate
  • card_travel Patent
  • schedule 90 minutes

Patents and Export Control Compliance: Managing Risk and Avoiding Unintentional Violations

Minimizing Export Control Liability in Patent Application Preparation, Development, and Analysis of Innovation; Licensing

About the Course

Introduction

This CLE course will guide patent and other counsel on navigating the intersection of patents and export control laws. The panel will examine the challenges facing patent owners, when and where export control issues arise, and related licensing issues. The panel will offer best practices for complying with export control laws.

Description

Running afoul of export control laws is surprisingly simple. If an American inventor in his Chicago lab hands data related to a patent application to a visiting Chinese scientist, this may be "deemed" an export. Likewise, distributing or outsourcing information by email, surface mail, or the cloud accessible outside the U.S. for patent application preparation purposes may be an export and regulated by U.S. law.

Many U.S. companies fail to realize that some commercial technologies are subject to the International Trafficking in Arms Regulations (ITAR) or the Export Administration Regulations (EAR) as defense or "dual-use" technologies. ITAR or EAR may govern sharing technical data and information in a patent application.

Violations of export control laws, even inadvertently, expose parties to potential stiff civil and criminal penalties and denial of export privileges. Counsel must understand the intersection between patent law and export control law to avoid any unintentional export violations.

Listen as our authoritative panel of patent and international trade attorneys provides an overview of export control laws and the challenges that patent owners face. The panel will discuss when and where export control issues arise, review licensing issues, and offer best practices for compliance with export control laws.

Presented By

David S. Bloch
Shareholder
Greenberg Traurig LLP

Mr. Bloch is an intellectual property litigator focused on helping clients understand the complex technical and legal issues that their businesses face. He litigates patent infringement, trademark, and trade secrets cases for clients in the financial services, technology (networking), healthcare, and pharmaceutical industries. A prolific writer and frequent public speaker (more than 120 invited lectures and 55 published articles), Mr. Bloch also is the co-author of IP and Technology in Government Contracts (eighth edition 2025).

David G. Henry
Managing Partner
Munck Wilson Mandala

Mr. Henry is a highly respected figure in the legal field renowned for his extensive and diverse expertise. He holds the distinction of being a registered patent attorney in the U.S. and Canada, a first-chair federal litigator, and the external general counsel for a group of privately held companies. Mr. Henry has successfully litigated and prosecuted various patent cases across different technological domains, ranging from medical devices to computer hardware and software. His expertise also extends to handling trademark, copyright, trade secret, and breach of contract cases, among others. Bringing to each transactional matter a perspective of being prepared to assert or defend the work product in the courtroom, Mr. Henry adeptly oversees negotiation and implementation of clients’ licensing programs, mergers and acquisitions, and other contract-based matters. His capabilities extend beyond litigation and transactional work – he is a certified mediator, utilizing his extensive experience to facilitate the resolution of complex commercial disputes, including those related to intellectual property. Mr. Henry also serves as an advisor to several governing boards and management teams for companies in the United States, Canada, and Europe.

Credit Information
  • This 90-minute webinar is eligible in most states for 1.5 CLE credits.


  • Live Online


    On Demand

Date + Time

  • event

    Tuesday, August 22, 2023

  • schedule

    1:00 p.m. ET./10:00 a.m. PT

  1. Overview of export control laws
    1. ITAR and technologies regulated under ITAR
    2. EAR and technologies regulated under EAR
  2. Challenges patent owners face
  3. When and where export control issues arise
    1. Employment or interaction with foreign nationals in the U.S. and abroad to develop/analyze technological innovation
    2. Patent licensing
    3. Cloud storage
  4. Licensing issues
  5. Best practices for compliance with export control laws

The panel will review these and other essential issues:

  • What export control compliance challenges do patent owners and applicants face?
  • When do export violations arise in the patent context?
  • What are the best practices for counsel to patent owners for compliance with ITAR and EAR requirements?