Invention disclosures should trigger Export Control Reviews when:
The disclosure indicates “dual use” concerns under the EAR:
- Such as: Biomedical sciences, computer sciences, space or space launch sciences, or any engineering or scientific discipline? (Including but not limited to: Chemical, Electrical, Semiconductor, Material Science, Physics, Mechanical, Geophysical, Marine, Astronomy, Nuclear, Artificial Intelligence, Robotics).
The invention may have direct defense applications under the ITAR:
- This includes any item (equipment, instruments, materials, software, and/or technical) specifically designed, developed or modified for military, crime enforcement or other defense-related applications)
All potential counter parties (e.g. MTAs/CDAs) and/or licensees & business partners should be screened against watch listed entities/persons in advance of item being transferred.
Software intended to be commercially licensed is not released into public domain. Licensing to an international person or entity requires prior U.S. Government Watch-list screening, regardless of export control classification.
Screening requirement still applies where the PI requires registration for use of the software (e.g. to maintain version control and track user identity), but is not commercializing it through the licensing process or otherwise charging for it.
Non-Disclosure Agreements (NDAs); Material Transfer Agreements (MTAs)
Incoming NDAs may contribute export controlled information that the PI and the University should be aware of in advance of any information transfer. Likewise, incoming MTAs may contribute export controlled items. If the item or information is proprietary and export controlled, it may require special security measures such as a Technology Control Plan (TCP)
- Solution: Incorporate language into incoming or mutual NDAs and MTAs that require any agreement Party to provide UNCG with advance notification (ideally at least 30 days) of intention to transfer an export controlled information or item under one of these instruments.
- Additional Agreement Clauses:
“Notwithstanding anything else in this Agreement, the Parties will not export or re-export any commodities, technology, software, or data, in violation of any laws or regulations of the United States of America.”
“Each Party agrees to comply with all export laws and regulations of the United States applicable to any information disclosed hereunder. Either Party reserves the right to decline the receipt of information in the form of technology or technical data identified on any US export control list, including the Commerce Control List (CCL) at 15 CFR 774, the US Munitions List at 22 CFR 121, and the Nuclear Regulatory Commission export control lists at 10 CFR 110 and 10 CFR 810.”
University Startups and Leases to External Third Parties
- Spin-off entities off may conduct export controlled work or undertake research which has an export controlled component to it.
- Recommendation: University should legally insulate itself by going on record as not being responsible for the entity’s export control compliance; particularly where a University PI is involved in the spin-off as a separate outside activity.
- Leasing transactions: in the event that University leases laboratory or office space to an external third party, University should insulate itself from that party’s export compliance responsibilities.
- Recommendation: Incorporate language in any leasehold agreement that specifically frames export control compliance and responsibility as the tenant’s (not University’s) obligation.