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Intellectual property in_federal_contracts.



Cutting edge technology is a driving force behind America’s sustained economic growth; domestic technology and knowledge-based markets are growing at unprecedented rates; new markets are opening to ...

Cutting edge technology is a driving force behind America’s sustained economic growth; domestic technology and knowledge-based markets are growing at unprecedented rates; new markets are opening to American goods under the influence of free-trade treaties; and companies that specialize in high technology are increasingly global in scope and reach. United States Government has played and continues to play very significant role in the development of these, being the biggest consumer of the cutting edge technology. In today’s marketplace, the private sector is also significant contributor. Some of the good examples are Internet and Wireless technology, which has fueled the growth digital age.

The United States Constitution gives the rights to the government to protect the technology and innovations which are the key to maintaining competitive edge over other nations. One of the “Bills Of Rights” is the protection of copyrights and patents, or what we now call “Intellectual Property Rights (IPRs)”.



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Intellectual property in_federal_contracts. Presentation Transcript

  • 1. Group Project Presentation By: Pravin Asar & Elias Wanna 7/18/13 MGT 5211 PROCUREMENT AND CONTRACT MANAGEMENT Prof. Ellis FIT – Summer 2013
  • 3.  US constitution: “The Congress shall have power to promote the progress of Science, and useful Arts, by securing for limited times to Authors and Inventors the exclusive right to their respective writings and discoveries….”  US Constitution gives the right to the government to protect the technology and innovations which are the keys to maintaining competitive edge over other nations.  “The issues pertain to the rights of the government, the contractor, and third parties; they are most likely the most difficult and complex” INTELLECTUAL PROPERTY IN FEDERAL CONTRACTS 3
  • 4.  IP in government contract: ◦ Patent ◦ Copyright ◦ Trade secrets  Government policies encourages maximum commercial use of IP developed under government contracts.  IP developed under contract with NASA, DoE, and DOD might be subject to higher/stringer government’s rights. INTELLECTUAL PROPERTY IN FEDERAL CONTRACTS 4
  • 5.  FAR, DFARS, and other Agencies specific regulations provide guidance for defining IP rights under government contracts.  Federal Acquisition Regulation (FAR) ◦ FAR Part 27: Patents, Data, and Copyrights  Scope: This part prescribes the policies, procedures, solicitation provisions, and contract clauses pertaining to patents, data, and copyrights. ◦ FAR Part 35: “Research and Development Contracting ◦ FAR Part 52: Solicitation Provisions and Contract Clauses.  This part details the government requirements via a series of provisions and clauses. ◦ “Government Contract Guidebook” Chapter 11 (Intellectual Property) INTELLECTUAL PROPERTY IN FEDERAL CONTRACTS 5
  • 6.  Defense Federal Acquisition Regulation Supplement (DFARS) ◦ The Department of Defense (DOD) is not covered by the FAR on patent rights. ◦ DOD adheres to separate DFARS instructions, and solicitation/contract terms. ◦ DFARS Part 227: Patents, Data, and Copyrights ◦ DFARS Part 252: Solicitation Provisions and Contract Clauses ◦ Broad base to use patented inventions during the performance of government contracts (or use eminent domain) INTELLECTUAL PROPERTY IN FEDERAL CONTRACTS 6
  • 7.  Small Business Innovation Research (SBIR) Program ◦ Established in 1982 as part of the SBI Development Act. ◦ Federal agencies required to outsource portion of their research to SBIR ◦ SBIR program three phases:  Determine the scientific and technical merit of concept  Future developing concepts for government needs  Implementation  Product/services for Federal Government use with non-SBIR funding  Commercial application of SBIR with non-Federal funding ◦ FAR 35 governs the IP developed under SBIR INTELLECTUAL PROPERTY IN FEDERAL CONTRACTS 7
  • 8.  Applicable Laws ◦ Laws of general applicability for purposes of IP are:     Competition in Contracting Act (CICA) Contract Dispute Act (CDA) Tucker Act Bayh-Dole Act ◦ CICA requires government to seek full and open competition for all contract. ◦ The CDA & Tuckers Acts provide relief when there is a relief in contract ◦ The Bayh-Dole Act provides for allocating rights in patentable inventions created under government contracts. INTELLECTUAL PROPERTY IN FEDERAL CONTRACTS 8
  • 9.  Government policy: ◦ Favors granting contractors the title to development. ◦ Promotes commercialization of inventions, and maximum participation of industry in federally supported research. ◦ Encourages maximum participation of industry .  Presidential memorandum: ◦ Supplement the government policies ◦ Example: Bayh-Dole Act in 1983 was supplemented by President Reagan in February 1983; extending the benefits of the act to all R&D contractors, including large businesses and for-profit organizations. INTELLECTUAL PROPERTY IN FEDERAL CONTRACTS 9
  • 11.  1. Contractor Ownership and Requirements ◦ Contractors can elect invention ownership per contract (negotiable). ◦ Contractors must disclose to government subject inventions within certain time frames  Two month after invention disclosure to the dept. in charge of patents.  Six month after the contractor becomes aware that an invention has been made. ◦ Contractor must file within the government to retain the title within 2 years. ◦ Government may file for the patent if contractor fails to or does not intend to. ◦ Government acquires the title, contractor is normally granted a revocable, nonexclusive, royalty free license to that invention. INTELLECTUAL PROPERTY IN FEDERAL CONTRACTS 11
  • 12.  2. Government Ownership and Rights ◦ The government retains nonexclusive, nontransferable, irrevocable, paid-up license to practice. ◦ The government may contract for additional rights (sublicense to foreign government, organization pursuant of existing treaties). ◦ The objective of the government to maximize the use of the IP ◦ Government reserves “march-in” right to grant the license to government     If contractor has not taken effective steps to use the IP Rights To alleviate health or safety needs Meet requirement of public use Contractor has not manufactured the product substantially in the US INTELLECTUAL PROPERTY IN FEDERAL CONTRACTS 12
  • 13.  3. Third Party Rights  An invention might fall within the scope of a broader patent.  In the private sector, licensing or avoiding proprietary technology is a prerequisite.  Government might not be enjoined from practicing a patented invention thought its contractors.  Third party (patentee) might bring suit for infringement against the government, but not its contractor.  Government might pass liability for damage from a suit to its contractor. INTELLECTUAL PROPERTY IN FEDERAL CONTRACTS 13
  • 14.  4. Public Ownership ◦ Developing an invention under government contract does not suspend domestic laws or international treaties regarding patentability. ◦ Publication, sale or public use of an invention will initiate the one-year statutory period within which patent protection must be thought. INTELLECTUAL PROPERTY IN FEDERAL CONTRACTS 14
  • 15.  Trade secrets differ from other forms of intellectual property  Differ in the type of info, requirements to protect it.  Information may be neither new or original  Divergences and intersections between trade secret laws and other intellectual property INTELLECTUAL PROPERTY IN FEDERAL CONTRACTS 15
  • 16. 1. Contractor Ownership and Rights • Contactor may claim copyright without government approval • Government permit contractor’s claim to enhance transfer and dissemination of data 2. Government Rights • Government own copyright of its employees’ work • Government reserves the right to receive copyrights from contractors work. 3. Third Part Rights and Deliverables • Contactor may not include copyrighted material not produced under the contract • Contractor have to obtain for or grant the government a copyright license. INTELLECTUAL PROPERTY IN FEDERAL CONTRACTS 16
  • 17.    Government owns all rights to technical data produced under contract. Commercial data is treated differently on FAR and DFARS Computer Software CIVIL (FAR) MILITARY (DFAR) Commercial Co-exist with commercial license Same as above plus form/fit, etc. Non-Commercial Made under contract Unlimited Privately Made by contractor Limited rights to data Restrictive rights to software same as above plus government purpose rights INTELLECTUAL PROPERTY IN FEDERAL CONTRACTS 17
  • 18.  “SBIR Data” ◦ The government obtains limited rights for data produced under SBIR contract for four years. ◦ During this time, the contractor has exclusive use of data and the government cannot disclose the data. ◦ Unlike FAR or DFARS, SBIR contractors have less time to commercialize development made under contract INTELLECTUAL PROPERTY IN FEDERAL CONTRACTS 18
  • 19.  1. FAR and DFARS ◦ Preserving rights requires:  Withholding and identifying technical data and computer software; or  Appropriately and consistently identify technical data and computer software. ◦ Contractors must mark every copy of the data, software, and documentation furnished to the government with less than unlimited rights. ◦ Inadequate marking may lead to forfeiting rightful restrictions and dedicated valuable IP to the public. INTELLECTUAL PROPERTY IN FEDERAL CONTRACTS 19
  • 20.  2. SBIR ◦ SBIR contactors rights are preserved similar to the FAR and DFARS contractors. ◦ SBIR contractors must be wary when the contract advance to phase III, the government may regard the SBIR program to be concluded, and start the clock on the rights periods which when expires allows the government to release technical data and computer software to other contractors. INTELLECTUAL PROPERTY IN FEDERAL CONTRACTS 20
  • 21.  Government contacts can be good for business in the short term, however long-term prosperity derived from developments from a government contract requires special vigilance.  Understand government contract to take appropriate action to protect IP INTELLECTUAL PROPERTY IN FEDERAL CONTRACTS 21