Government Contractors and
Technology IP Forums:
Protecting Your IP From Uncle Sam
November 2013
Table of Contents
TAB
Protecting Your IP From Uncle Sam – Presentation Slides
A
Protecting Your Company’s IP Rights – CLE Materials
B
Attachments
C
Attachment 1 – Common IP Clauses
Attachment 2 – U.S. Government Rights in Commercial Software
and Technical Data
Attachment 3 – Appeal of Alenia North America, Inc. (Armed
Services Board of Contract Appeals)
Tab A
©2013 Morrison & Foerster LLP | All Rights Reserved | mofo.com
Government Contractors and
Technology IP Forums:
Protecting Your IP From Uncle Sam
November 12, 2013
Jonathan Bockman
Partner
Morrison & Foerster
Jonathan Bockman’s practice concentrates on domestic and
international patent prosecution, portfolio management, IP due
diligence, patent infringement and validity determinations, and IP
litigation support. His clients range from some of the largest
domestic and international companies to early stage start-ups.
Mr. Bockman has experience in a wide variety of technology
areas, including advanced materials, semiconductors, medical
devices, consumer electronics, Internet and software. Mr.
Bockman is co-chair of the firm’s Advanced Materials Group. His
work in this area includes experience with nano technology,
polymer chemistry and composite materials. His clients include
Dyson, Toray Plastics (America) and Konica Minolta.
2
1
Adriana Suringa Luedke
Intellectual Property Counsel
Lockheed Martin Corporation Information Systems &
Global Solutions
Ms. Luedke is responsible for providing legal support for
Lockheed Martin Corporation’s Information Systems & Global
Solutions division relating to intellectual property matters.
Her responsibilities include drafting and review of government
and commercial intellectual property and software licenses and
asset purchase and sale agreements; management of outside
counsel for patent and trademark prosecution and litigation;
intellectual property review to identify and appropriately protect
the corporation’s intellectual property; due diligence; advising on
infringement, trademarks, product clearances, patentability
opinions, and government and commercial contract issues
relating to data rights, counterfeit items, data privacy, cyber
security, proprietary information and intellectual property; and
counseling concerning use and licensing of open source and
commercial software.
3
Colin M. Raufer
Intellectual Property Attorney
The Boeing Company
Colin M. Raufer is an Intellectual Property Attorney with The
Boeing Company’s Defense, Space & Security, Network & Space
Systems Group (BDS-N&SS). Based in Arlington, Virginia, he
currently provides support on a wide range of intellectual property
issues across numerous Boeing programs, specializing in the IP
issues associated with Government Contracts. Prior to joining
Boeing in 2005, Colin worked for 6 years at Raytheon Company
where he supported their Intelligence and Information Systems
Division in Reston, Virginia and their Space and Airborne
Systems Division in El Segundo, California. Prior to that, Colin
worked as a Patent Attorney for the Motorola Company where he
drafted patents related to digital cellular telephone technology.
Colin holds an Engineering degree from Rutgers University, a
Law degree from the University of Colorado, and an MBA from
UCLA. He is a member of the Patent Bar, the Virginia Bar, and
the New Mexico Bar.
4
2
Tina D. Reynolds
Of Counsel
Morrison & Foerster
Tina Reynolds is an Of Counsel in Morrison & Foerster's
Government Contracts Practice. She represents a wide variety of
government contractors including information technology,
defense, and pharmaceutical companies, with a focus on general
contract counseling, compliance, and litigation.
Tina counsels contractors on compliance with federal acquisition
and ethics regulations. She has been involved with numerous
internal investigations and compliance reviews, and with
voluntary disclosures to agency Inspectors General. Tina
routinely advises clients concerning prime-subcontractor
relationships, sources of supply, price reductions and price
reporting issues, organizational conflicts of interest, the
safeguarding of intellectual property and other proprietary
interests, the handling of classified materials, and agency
suspension and debarment proceedings.
5
Debra Storms
Associate General Counsel
Booz Allen Hamilton Inc.
Debra Storms is Associate General Counsel at Booz Allen
Hamilton Inc., in McLean, Virginia. She is an accomplished
attorney with commercial and international experience, and is the
lead attorney for Intellectual Property, Information Security,
Exports, Cyber and Technology licensing and related matters.
She joined Booz Allen in 2002, and prior to that was in private
practice with the Seyfarth Shaw and Thelen law firms in San
Francisco, before accepting corporate attorney positions for
technology firms in Northern Virginia. She received her law
degree from the University of California at Berkeley, and her
undergraduate degree from UCLA.
6
3
Introduction
What Is Intellectual Property?
•
•
•
•
•
•
Patent
Copyright
Trade Secret
Proprietary Data
Protected Data
Trademark
8
4
Government Contract
Legal Considerations
• The Bayh-Dole Act
• general rule: the contractor owns the IP and the government gets a royalty-free,
nonexclusive license to use the IP worldwide
• Authorization and Consent
• FAR clauses
• Dependent upon type of IP (patent, data rights, etc.)
• Dependent upon commercial or non-commercial nature of the contract
• DFAR and other agency-specific clauses
9
Scenario One
5
Government View
I Want Your Data* and Rights to Use Your Data**
*Enough to meet Government needs
**for critical sustainment activities***
***reprocurement, operations, maintenance, repair, support, upgrades and modifications
Contractor View
Limit data delivered and Government’s rights in data to win new work – the Government should not get more than its share
11
Scenario
•
•
•
•
To: IP Counsel
From: Program Manager
Re: New Proposal
We are preparing a response to an RFP and want to propose delivery
of an integrated solution that will include our preexisting software and
GFI software that we will customize for this customer as well as
COTS software that we also want to customize and some open
source software. The RFP specifies that the deliverables must be
delivered with no less than government purpose rights to be
considered for the contract. I would appreciate your
recommendations as to how to address IP rights in our proposal.
12
6
The Issues
• Government furnished software
• Pre-existing company software: commercial or noncommercial
• Customizations of preexisting software: commercial or
noncommercial
• COTS
• Open source software
13
GFI
• No issue as to government rights or contractor rights
• Government owns it or has the right to deliver it to contractor
• Contractor has a license to use the software for this contract only and will
get unlimited rights in any customizations of the GFI software
• Confirm source and contents to GFI software
• Any COTS included that may limit ability to modify
• Any FOSS included that may include copyleft or other risky license terms
14
7
Contractor’s Preexisting Software
• Non-commercial:
• If developed at private expense, Government is entitled to no more than
restricted rights under FAR/DFARS
• Customizations delivered with unlimited rights if segregable
• Customizations delivered with restricted rights if “minor modifications”
• Non-segregable customizations made with contract dollars may convert
preexisting software into a mixed funding deliverable with the
Government being entitled to government purpose rights in the whole
program
15
Contractor’s Preexisting Software
• Commercial
• Source of funding irrelevant – FARS/DFARS N/A
• Offer customary commercial license
• Modifications also covered under commercial license if useful for
commercial customers
• Offer unlimited rights in customizations only (not underlying commercial
software) if only useful for govt. purposes
• Watch out for FAR 52.227-19 and DFARS 252.204-7000 or similar
clauses in RFP (now common)
• FAR 52.227-19 converts commercial license into restricted rights license
(which allows software to be modified)
• DFARS 252.204-7000 may allow the Government to prevent contractor’s
reuse of deliverables without permission
16
8
COTS Software
• Negotiate license terms with vendor
• Compliance with federal procurement laws
• No licensee indemnification
• No choice of law clauses
• No automatic renewal
• License allows for intended use – modifications, derivative works,
distribution?
• Negotiate license for any customizations made under contract (vendor
may own, but Government gets perpetual unlimited license)
• License may need to be transferable or issued directly to Government
customer
• Disconnects between Government requirements and vendor license
terms must be resolved to mitigate contractor’s risk
17
FOSS
•
•
•
•
FOSS is a licensed commercial product
No ability to negotiate terms
Ensure license allows for intended use under the contract
Confirm that Government understands and agrees to accept FOSS
license terms
18
9
The Deliverables (DFARS 252.227-7014)
Computer Software Asserted Basis for to be Furnished Category** With Restrictions*
Restrictions***
Name of Person Asserting Rights Assertion****
Preexisting
noncommercial s/w
Developed exclusively Restricted rights
at private expense
Contractor
COTS or preexisting commercial s/w and customizations and modifications thereto
Commercial s/w
Commercial license terms (attached)
Contractor or Vendor
FOSS
Open source s/w
Open source license terms (attached)
*Generally, development at private expense, either exclusively or partially, is the only basis for asserting restrictions on the Government's rights to use, release, or disclose computer software. **Indicate whether development was exclusively or partially at private expense. If development was not at private expense, enter the specific reason for asserting that the Government's rights should be restricted. ***Enter asserted rights category (e.g., restricted or government purpose rights in computer software, government purpose license rights from a prior contract, rights in SBIR software generated under another contract, or specifically negotiated licenses). ****Corporation, individual, or other person, as appropriate. 19
Scenario Two
10
Scenario
• To: IP Counsel
• From: Program Manager
• Re: Call From Government Client Regarding Copyrights and Licenses
• I just received a message from the Contracting Officer inquiring about the government
client’s rights in certain music, videos and songs. Last month, as our team was
finishing the training deliverables, they received additional instruction from the COTR,
who requested that songs and videos be included in a deliverable to make the training
“current” and “hip” (her words not mine). She felt this would inspire her government
team. The COTR gave us a list of songs and videos to include in the final deliverables.
My team is in the process of sourcing the songs and videos, and may need to make
some changes to fit the training deliverable. The final review with the government client
is next week, and the Contracting Officer wanted to make sure the government would
have the appropriate rights, as the plan is to distribute the training at the upcoming all
hands meeting, and then to include parts of it in promotional materials at a public event
in two months. I’m sure this is all fine, but wanted your guidance as we are in the
process of finishing the deliverable and found really good “current” and “hip” material
on the internet we would like to use.
21
The Issues:
•
•
•
•
•
Unlimited Rights
Copyright
Government Special Rights Clauses.
Obtaining Third Party Permission for Copyright.
Contractor Restriction on Disclosing Information About the Contract
22
11
What is Copyrightable?
• Original works of authorship, fixed in a tangible medium, with a
modicum of creativity
• Examples: literary works; musical works; dramatic works;
pantomimes and choreographic works; pictorial, graphic, and
sculptural works; motion pictures and other audiovisual works; sound
recordings; architectural works
23
What is NOT Copyrightable?
• What is NOT Copyrightable?
• Works not fixed in a tangible medium (e.g., performances not written down
or recorded)
• Works lacking original authorship or a modicum of creativity (e.g.,
something not originally/independently created by the author; something
with no creativity)
• Titles, names, short phrases, and slogans
• Ideas, procedures, methods, systems, processes, concepts, principles,
discoveries
• The U.S. Government does not maintain any copyrights, and official
works by U.S, government employees are not subject to U.S.
copyright.
24
12
FAR/DFAR Treatment of Copyrighted Works (FAR 52.227-14; DFAR 252.227-7021)
• Data First Produced in Contract Performance Contractor must obtain
permission from the Contracting Officer prior to asserting rights in any
copyrighted work containing data first produced in the performance of
a contract; but do not need permission to assert copyright in
technical, scientific articles based on or continuing data in academic,
technical or professional journals.
• Written request and identify data involved. Written request for permission
to assert its copyright in works containing data first produced under the
contract.
• Affix copyright notice with attribution to government contract.
25
FAR/DFAR Treatment of Copyrighted Works (cont’d)
• Data Not first produced in contract performance (FAR 52.227-14;
DFAR 252.227-7020)
• General prohibition from contractor including copyrightable works
• If contractor will deliver previously existing copyrightable works, it must:
• Acquire a copyright license for the Government; or
• Obtain permission from the contracting officer to do otherwise
• Such license shall be broad in scope and permit the Government to
publicly display, reproduce, make derivative (as if the work was first
produced under the contract)
• Data delivered without markings will be presumed delivered with ULR
26
13
Rights in Data -- Special Works Clauses (FAR 52.227-17)
• Contracts for the production or compilation of data (excluding
software) for the Government’s own use:
• Audiovisual works, motion picture, television recordings, with our without
sound, sound tracks, historical depictions; government surveys;
• Instruction and guidance for discharge of official duties;
• Compilation of reports, books, studies, surveys, or similar documents that
do not involve research, development, or experimental work; and
• Certain computer software programs (commercial advantage or agency
mission sensitive)
• Copyright assignment to Government may be excluded
• Special license can be limited by talent releases, music copyrights,
etc.
27
Rights in Data – Existing Works (FAR 52.227-18)
• Contracts exclusively for the acquisition (without modification) of
existing works such as, motion pictures, television recordings,
audiovisual works; sound recordings; musical, dramatic, and literary
works; pantomimes and choreographic works; pictorial, graphic, and
sculptural works.
• May limit the Government’s use of the works, such as means of
exhibition or transmission, time, type of audience, and geographical
location.
• If the existing works are to be modified, edited, translated or
additional subject matter developed, special license rights can be
made for the new material and modifications.
28
14
Contractor’s Actions
• Review contract to determine applicable clauses
• Note any restriction on Contractor disclosing information about the
contract to third parties (DFAR 252.204.7000)
• Review the sourced material
• Determine who holds copyright in the work
• Music, lyrics, video, motion picture
• Determine necessary permissions and extent of licenses
• Determine if new material will be produced
• Negotiate Government license consistent with the Government’s
needs to use the works (existing and new works)
• Negotiate liability and indemnity
29
Scenario Three
15
Scenario
• To: IP Counsel
• From: Client
• Please review the IP Terms in the attached CRADA (Cooperative
Research and Development Agreement).
31
31
CRADA
32
32
16
CRADA
33
33
CRADA
34
34
17
CRADA
35
35
CRADA
36
36
18
CRADA
•
37
37
CRADA
38
38
19
CRADA
39
39
CRADA
40
40
20
CRADA
41
41
CRADA
42
42
21
CRADA
• Good news: These terms are essentially “take it or leave it”.
• Bad news: Collaborator is giving IPR to US Government.
• Collaborator will need to give to the US Government essentially
“Government Purpose Rights” (GPR) in any Subject Data.
________________________________________________________
• But there are still steps you can take to protect your Client:
• Make an Executive Decision that the CRADA ought be entered into
by Collaborator Corporation.
• Put boundaries around the scope of the effort. Define objectives
narrowly. Narrow the performance objectives. Cabin the SOW.
43
43
CRADA
•
•
•
•
•
Schedule Background Technology.
Schedule Background IP.
Set some ground rules.
All work is to be on a “best effort” basis.
Either Party will make the other aware of any license rights necessary
to perform the work contemplated under the CRADA.
44
44
22
CRADA
• The Parties expressly agree that the XYZ Algorithm is pre-existing IP
of Collaborator. No rights in it are conveyed by entering into this
Agreement.
• Neither Party is required to deliver any Background IP but may
choose to do so in order to achieve the goals of the CRADA.
• Joint reports shall contain proprietary markings to protect the IP of
both Parties.
• Parties may amend, as needed, to introduce new scope.
45
45
Best Practices to Protect IP
1. Have a process in place to proactively manage your IP
• Carefully read the solicitation or RFP and be aware of FAR clauses
• Be aware of agency-specific rules
• Establish a protocol for appropriately marking IP and data being delivered to the
Government and use the prescribed marking legends exactly
2. Be careful when entering into teaming agreements, collaboration
agreements, subcontracts, etc.
• Identify and flow-down to subcontractors all intellectual property clauses that are
required or desirable to flow down to best protect your company's intellectual property
3. Remember, the Government has some flexibility in negotiating IP
rights
• More flexibility in sole source procurements than in competitions
• Be careful not to take exception to solicitation terms and conditions
• New case is cause for some caution: Alenia North America (ASBCA, on motion to
dismiss, government suggests absent IP clauses can be read in under Christian
doctrine)
46
23
Best Practices to Protect IP
4. Negotiation in commercial contracts
• Tailor standard commercial licenses to accommodate federal law and agency
requirements
• If possible, do not accept FAR 52.227-19, Commercial Computer Software License
as a commercial license
5. Protection of trade secrets
• Exempted from disclosure under FOIA exemption 4 (trade secrets and commercial
or financial information so long as release could cause competitive harm and
company took steps to preserve confidentiality both internally and externally (need
to know, use of NDAs, etc.)
6. M&A Due Diligence
• IP frequently is overlooked in due diligence where government contracts are
involved
• Determining baseline of IP that was developed at private expense is critical
• Look for Bayh-Dole Act compliance
• Target may have given away IP unless appropriately marked when delivered to the
Government
47
Comments?
Questions?
24
Tab B
©2013 Morrison & Foerster LLP | All Rights Reserved | mofo.com
Protecting Your Company’s
Intellectual Property Rights
Under Government Contracts
and Agreements
WMACCA Government Contractors and Technology IP Forums
November 12, 2013
Presented by
Jonathan Bockman
703.760.7769
[email protected]
Tina Reynolds
703.760.7701
[email protected]
Overview
• What is Intellectual Property
• Identifying Intellectual Property Issues
• Government IP Considerations
• Bayh-Dole Act
• Authorization and Consent
• Software & Data Rights
• Tips for IP Best Practices
2
1
What Is Intellectual Property?
• PATENT
• Exclusive right of inventor to exclude others from making, using or
selling new, non-obvious, useful idea for a period of time in
exchange for public disclosure
• COPYRIGHT
• Exclusive right of author to make copies, prepare derivative works,
and publish the tangible expression of an idea
• TRADE SECRET
• Information of economic value because it is secret and owner takes
efforts to keep secret
3
What Is Intellectual Property? (cont.)
• PROPRIETARY DATA
• Data that embodies a trade secret and was developed at private
expense (e.g., Limited Rights Data, Restricted Computer Software)
• PROTECTED DATA
• Data produced under a Government agreement, which would have
been a trade secret if produced privately; is exempted from FOIA
for a period of time -- requires special statute
• TRADEMARK
• Identification of the source of a product
4
2
Government IP
Considerations – In General
5
Government Contract
Principles Affecting IP
• Federal funds always come with strings
• Sovereign immunity is a powerful shield
• Must be expressly waived by statute
• Limits both causes of action and venue
• Traditional IP remedies, including injunctive relief, are not available
against the Government
• The way rule is often stated: if the government pays for
development of the IP, it owns the IP
6
3
Government Contract
Principles Affecting IP (cont.)
• The actual general rule: the contractor owns the IP and
the government gets a royalty-free, nonexclusive license
to use the IP worldwide
• The golden rule: contractors/grantees need to ensure
they understand their rights and exercise them
• Common FAR clauses and explanations (Attachment 1)
7
Bayh-Dole Act
• Bayh-Dole University and Small Business Patent
Procedures Act of 1980 (codified at 35 U.S.C. §§200-212)
• Original purpose was to establish a uniform federal policy
enabling researchers to retain inventions made under
federally funded research programs
• According to The Economist: “perhaps the most inspired piece of
legislation to be enacted in America over the past half century”
• Covered parties:
• Before 1983: universities, non-profits and small businesses
• After 1983: Executive Order, all private parties
• Note: Does not apply to DoE or NASA
8
4
Bayh Dole Act - Purposes
• Encourages participation in federal R&D
• Promotes collaboration between non-profit and
commercial organizations
• Ensures the Government retains sufficient rights to meet
its needs
• Protects the public from non-use or unreasonable use of
inventions developed with Government funds
9
Bayh-Dole Act (cont.)
• Covered Agreements: grants, cooperative agreements,
and procurement contracts
• The Bayh-Dole Act is triggered whenever federal funds
are used to develop a “subject invention”
• Subject Inventions: Any invention of the contractor
conceived of or first actually reduced to practice in the
performance of work under a funding agreement
• Can be patented or simply patentable
• Provided the Act’s requirements are followed, the inventor
gets exclusive title
10
5
Bayh Dole Act (cont.)
• Government License
• The Government retains a nonexclusive, nontransferable,
irrevocable, royalty-free license to the invention for use by or on
behalf of the United States
• Cannot put into stream of commerce
11
Bayh Dole Act (cont.)
• What must company do to retain title/exclusive license?
• Notify Government of invention
• Within two months after development
• Elect in writing to retain title
• File patent application within two years
• Follow preference for United States industry
• Must manufacture goods substantially in the U.S. or obtain waiver
• Any licensee must agree to manufacture goods substantially in the U.S.
12
6
Bayh Dole Act (cont.)
• Consequences of not following the rules:
Government Right to Title
• The Government may take title in countries where private party
does not file
March-in Rights
• Compulsory license to a third party
• Not taking effective steps to achieve practical application of
invention within a reasonable time
• Not reasonably satisfying national health or safety needs
• Not reasonably satisfying regulatory requirements for public use
• Permission not requested for non-U.S. licensing
13
Authorization & Consent
• The Government may use or have used on its behalf any
U.S. patent
• The patent holder is to be compensated exclusively with a
reasonable royalty
• A patent holder not satisfied with the agency’s resolution
of its infringement claim has an exclusive remedy -- suit in
the U.S. Court of Federal Claims under 28 U.S.C. § 1498
• Exclusive remedy also applies when a private third party acting on
the Government’s behalf is the infringer
• Affirmative defense: (1) authorization and consent; (2) for the Gov’t;
& (3) use falls within the scope of Gov’t program
• Statute offers protections to government contractors
14
7
Subcontractor Rights
and Obligations
• Prime contractor may not use subcontract award as
leverage for obtaining rights in subcontractor’s subject
inventions or data
• IP clauses, marking requirements, etc. should be flowed
down to subcontractors by primes.
• Enter into appropriate non-disclosure agreements with
subcontractors and teaming partners
15
Software and Data Rights
16
8
What is Data?
• Data means recorded information, regardless of form or
the media on which it may be recorded. The term
includes technical data and computer software. It does
not include information incidental to contract
administration.
• Technical data means recorded information of a scientific
or technical nature. The term includes recorded
information of a scientific or technical nature that is
included in computer databases.
17
What is Software?
• Computer software means
• (i) Computer programs that comprise a series of instructions, rules,
routines, or statements, regardless of the media in which recorded,
that allow or cause a computer to perform a specific operation or
series of operations; and
• (ii) Recorded information comprising source code listings, design
details, algorithms, processes, flow charts, formulas, and related
material that would enable the computer program to be produced,
created, or compiled.
18
9
What is Software? (cont.)
• Computer software documentation means owner’s
manuals, user’s manuals, installation instructions,
operating instructions, and other similar items, regardless
of storage medium, that explain the capabilities of the
computer software or provide instructions for using the
software.
19
Allocation of Data Rights
• Attachment 2 has overview of types of rights
• Government obtains unlimited rights in
• Data first produced in the performance of the contract
• Form, fit, and function data delivered under the contract
• Data delivered under the contract (except for restricted computer
software) in the form of manuals or instructional and training
material for installation, operation, or routine maintenance and
repair of items, components, or processes delivered or furnished
for use under the contract
• All other data delivered under the contract unless contract permits
delivery as limited rights data or restricted computer software
20
10
Allocation of Data Rights (cont.)
• Unlimited rights means the right of the Government to
use, disclose, reproduce, prepare derivative works,
distribute copies to the public, and perform publicly and
display publicly, in any manner and for any purpose, and
to have or permit others to do so
• Contractor shall have the right to
• Assert copyright in data first produced under the contract (note:
Gov’t retains Gov’t purpose rights in copyrighted data)
• Use, release to others, reproduce, distribute, or disclose such data
21
Allocation of Data Rights (cont.)
• In general, Contractor shall not deliver data not first
produced in the performance of contract
• Contractor may withhold from delivery limited rights data
or restricted computer software and provide form, fit and
function data instead
• If agency has a need for limited rights data or computer
software, it shall include
• FAR 52.227-14, Alternate II, required for delivery of limited rights
data
• FAR 52.227-14, Alternate III, required for delivery of restricted
computer software
22
11
Allocation of Data Rights (cont.)
• Mark It or Lose It
• Also, if challenged, contractor must prove marking was
proper
23
Software & Data Rights in
Commercial Item Contracts
• Agency obtains only those rights in technical data, and
licenses for commercial computer software and
commercial computer software documentation
customarily provided to the public. FAR 12.211 & 12.212
• Standard commercial licenses must generally be tailored
to accommodate Federal law and agency requirements
• Indemnification
• Disputes
• Obligation of funds
• National security consideration
24
12
Software & Data Rights in
Noncommercial Item Contracts
• FAR 52.227-19, Commercial Computer Software License
• But, is inconsistent in many respect with such licenses
• May be used in lieu of standard or customary license
• Marking Requirement?
• As described above, Government rights in part depend on
who funded the development of the software or data
• Assertion and marking requirements
• Rights also depend upon which FAR clause applies
25
Software & Data Rights in
Noncommercial Item Contracts (cont.)
• FAR clauses can: (1) grant patents to either the
government or the contractor; (2) provide restricted,
limited, or unlimited data rights to the government; and (3)
give a very cursory treatment of copyright
• FAR 52.227-11, Patent Rights -- Retention by the Contractor
(implements Bayh Dole)
• FAR 52.227-13, Patent Rights -- Ownership by the Government
• FAR 52.227-14, Rights in Data – General
• Note that the DFARS have very specific and different
rules.
26
13
Software & Data Rights in Grants
• Generally, the Government obtains “government purpose”
rights (limited rights)
• The government is permitted to obtain, reproduce, or
publish or otherwise use data first produced under a grant
award and authorize others to do so for federal
government purposes. OMB Circular A-110 § C.36(c)
27
Software & Data Rights in Grants (cont.)
• The Circular permits release of "research data" under the
Freedom of Information Act
• Research data does not include trade secrets, commercial
information, materials held in confidence until published, or
information protected by personal privacy or other statutes. OMB
Circular A-110 § C.36(d)
• NIH regulations preclude release of for-profit company’s research
data
28
14
Best Practices
29
Best Practices To Protect IP
1. Have a process in place to proactively manage your IP
• Carefully read the solicitation or RFP and be aware of FAR clauses
• Be aware of agency-specific rules
• Establish a protocol for appropriately marking IP and data being delivered to the
Government and use the prescribed marking legends exactly
2. Be careful when entering into teaming agreements, collaboration
agreements, subcontracts, etc.
• Identify and flow-down to subcontractors all intellectual property clauses that are
required or desirable to flow down to best protect your company's intellectual property
3. Remember, the Government has some flexibility in negotiating IP
rights
• More flexibility in sole source procurements than in competitions
• Be careful not to take exception to solicitation terms and conditions
• New case is cause for some caution: Alenia North America (ASBCA, on motion to
dismiss, government suggests absent IP clauses can be read in under Christian
doctrine) (Attachment 3)
30
15
Best Practices to Protect IP
4. Negotiation in commercial contracts
 Tailor standard commercial licenses to accommodate federal law and agency
requirements
 If possible, do not accept FAR 52.227-19, Commercial Computer Software License
as a commercial license
5. Protection of trade secrets
 Exempted from disclosure under FOIA exemption 4 (trade secrets and commercial
or financial information so long as release could cause competitive harm and
company took steps to preserve confidentiality both internally and externally (need
to know, use of NDAs, etc.)
6. M&A Due Diligence
 IP frequently is overlooked in due diligence where government contracts are
involved
 Determining baseline of IP that was developed at private expense is critical
 Look for Bayh-Dole Act compliance
 Target may have given away IP unless appropriately marked when delivered to the
Government
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Tab C