United States: Implications Of U.S. Sanctions Program On Intellectual Property Owners

Last Updated: April 17 2014
Article by E. Martín Enriquez

To advance U.S. foreign policy and national security objectives, the U.S. maintains laws and regulations that impose economic sanctions against certain countries, individuals, and entities (the "U.S. Sanctions Program"). 31 C.F.R. § 501 et seq. The Office of Foreign Asset Control ("OFAC") at the Department of the Treasury manages the U.S. Sanctions Program. The U.S. Sanctions Program prohibits U.S. nationals and U.S. companies from doing business in embargoed or sanctioned countries and from doing business with individuals or entities subject to U.S. sanctions laws and regulations. Penalties for violating the U.S. Sanctions Program include civil and criminal fines, imprisonment, and the loss of tax credits or export privileges.

The U.S. government also prohibits cooperation with unapproved boycotts and embargoes by other countries. 15 C.F.R. § 760 et seq. The "Arab League" boycott of Israel is the principal foreign economic boycott that U.S. nationals and U.S. companies must be concerned with today. The boycott targets companies that do business with Israel, Israeli companies, or Israeli citizens. The so-called Central Boycott Office maintains a blacklist of companies that engage in business with Israel, Israel companies, and Israel citizens. The blacklist is periodically disseminated to Arab League members.

The U.S. government has enacted anti-boycott legislation to counteract the Arab League's boycott of Israel. The anti-boycott laws, however, apply to all boycotts imposed by foreign countries that are unsanctioned by the U.S. The penalties for violation of U.S. anti-boycott laws can include civil and criminal fines, imprisonment, and the loss of tax credits or export privileges. For additional information see http://www.bis.doc.gov/complianceandenforcement/antiboycottcompliance.htm.

Intellectual property owners have been affected by U.S. sanctions and anti-boycotting requirements. These prohibitions have at times included a ban on the payment of fees and expenses for protecting and maintaining intellectual property rights in certain countries. With certain exceptions, the existing U.S. Sanctions Program and anti-boycotting legislation allow intellectual property owners to protect their intellectual property rights by doing all of the following in sanctioned and embargoed countries:

  1. File and prosecute applications to obtain a patent, trademark, copyright, or other form of intellectual property protection;
  2. Receive a patent, trademark, copyright, or other form of intellectual property protection;
  3. Review or maintain a patent, trademark, copyright, or other form of intellectual property protection;
  4. File and prosecute opposition or infringement proceedings with respect to a patent, trademark, copyright, or other form of intellectual property protection;
  5. Pay fees currently due to a foreign government; and
  6. Pay reasonable and customary fees due to attorneys or representatives in a foreign country in connection with the above-referenced activities.

These activities are permissible because the sanctions either do not prohibit such activities or because OFAC has granted a license allowing such activities.

There are two types of licenses: General Licenses and Specific Licenses. General Licenses exclude certain types of activities from the U.S. Sanctions Program and eliminate the need to obtain written consent from OFAC to engage in those activities. 31 C.F.R. § 501.801(a). A Specific License is a permit issued by OFAC allowing an individual or entity to engage in a prohibited activity in the embargoed or sanctioned country. 31 C.F.R. § 501.801(b). Written applications for a specific license must satisfy the requirements set forth in 31 C.F.R. § 501.801(b) of the Reporting, Procedures, and Penalties Regulations. If a General License has not been granted, a Specific License must be obtained. Specific Licenses are discretionary.

Presently, the U.S. Sanctions Program targets the following countries/regions, and/or individuals or entities in those countries/regions: the Balkans (former Yugoslavia-Serbia), Belarus, Burma, Ivory Coast (Cote d'Ivoire), Cuba, Republic of Congo, Iran, Iraq, Lebanon, Libya, North Korea, Somalia, Sudan, Syria, and Zimbabwe. Most recently, the U.S. imposed several sanctions on Russia and Ukraine nationals and Russia's Bank of Rossiya as a result of Russia's actions in the Crimean Peninsula. The most recent sanctions against Russia were issued on April 11, 2014. The U.S. Sanctions Program regulations against the Balkans, Belarus, Congo, Ivory Coast, Lebanon, Russia, Somalia, Ukraine, and Zimbabwe do not prohibit U.S. nationals or U.S. Companies from engaging in activities to protect their intellectual property rights in those countries. As a result, intellectual property owners may file and prosecute applications, receive protection, renew or maintain registrations, or file opposition or infringement proceedings. The sanctions targeting these countries affect only certain individuals and entities from those countries. Importantly, because U.S. sanctions do target Russia's Bank of Rossiya, any payment for any intellectual property protection activity that is made through Bank of Rossiya would violate U.S. sanctions law.

OFAC has granted a General License for intellectual-property related activities for the following countries: Burma (31 C.F.R. § 537.522); Cuba (31 C.F.R. § 515.528); Iran (31 C.F.R. § 560.509); Iraq (31 C.F.R. § 575.533); Libya (General License No. 8); Sudan (31 C.F.R. § 538.514); and Syria (General License 15). As a result, intellectual property owners may file and prosecute applications, receive protection, renew or maintain registrations, or file opposition or infringement proceedings, and pay reasonable and customary fees due to government agencies or due to attorneys or representatives within those countries for intellectual property protection-related activities.

North Korea is presently the only country under the U.S. Sanctions Program for which OFAC requires intellectual property owners to obtain a Specific License to register, maintain, and protect intellectual property rights. Executive Order 13570 (April 18, 2011).

In recent years, there has been a decline in the participation of the boycott of Israel by Arab League members and by Arab League members that are also sanctioned countries under the U.S. Sanctions Program. With the exception of Lebanon, Libya, and Syria, there is no reported activity of U.S. sanctioned countries participating in the boycott of Israel. There are recent reports indicating that U.S. companies continue to receive questionnaires and disclosure requirements concerning business relationships with Israel and Israeli companies and citizens from Lebanon, Libya, and Syria. It is unclear, however, whether these countries have denied intellectual property protection to U.S. companies on the basis that those companies are doing business with Israel or Israeli companies or citizens. Importantly, intellectual property owners should be aware that completing these questionnaires or disclosures could violate U.S. sanctions law. Any intellectual property owner that receives a questionnaire or disclosure should contact legal counsel.

In sum, with the exception of North Korea, the existing U.S. Sanctions Program allows U.S. nationals and U.S. companies to protect their intellectual property rights because the sanctions either do not prohibit such activities or because OFAC has granted a license allowing such activities. Because the U.S. Sanctions Program changes quickly and, often, without much public notice, individuals and companies wishing to protect their intellectual property rights outside the U.S. should consul OFAC counsel before retaining firms in other countries, paying official fees to foreign government agencies, or transmitting payments through financial institutions in other countries. Similarly, because countries may adopt a boycott or change their existing boycott regime without much public notice, individuals and companies wishing to protect their intellectual property rights outside the U.S. should consul counsel before engaging in intellectual property protection-activities in other countries.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

E. Martín Enriquez
In association with
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement

Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of www.mondaq.com

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


From time to time Mondaq may send you emails promoting Mondaq services including new services. You may opt out of receiving such emails by clicking below.

*** If you do not wish to receive any future announcements of services offered by Mondaq you may opt out by clicking here .


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at enquiries@mondaq.com.

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.