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Obtaining Rights to Inventions Under a Government Contract

by Jesse Erlich

If the contractor or subcontractor of a government contract elects to retain title to a subject invention, there are requirements that the contractor must meet. A few of the more important requirements for obtaining rights to inventions under government contracts are as follows:

  1. Identify publications, offers for sale and public use of the subject invention.
  2. Require employees (other than clerical or non-technical) by written agreement to disclose promptly in writing to personnel identified as responsible for the administration of patent matters each subject invention made under the contract in order that the contractor can comply with the appropriate disclosure provisions. The contractor must also execute all papers necessary to file provisional or patent applications on subject inventions and to establish the government’s rights in the subject inventions.
  3. Notify the contracting officer of a decision not to file a provisional or non-provisional patent application on the subject invention, not to continue prosecution of a patent application, not to pay a maintenance fee on an issued patent, or defend re-examination or an opposition proceeding on a patent in any country, not less than 30 days before expiration of such a response or filing period.
  4. Execute and promptly deliver to the contracting federal agency all instruments necessary to establish or confirm the rights the government has throughout the world in those subject inventions to which the contractor elects to retain title.
  5. Convey title to the contracting agency (U.S. Government) if the contractor or subcontractor does not elect to take title or does not fulfill the relevant requirements above when requested by the government, to enable the government to obtain patent protection throughout the world in that subject invention.
  6. Include in the specification of a provisional or non-provisional application the statement: “This invention was made with Government support under (identify the contract) awarded by (identify the agency). The Government has certain rights in the invention.”

In addition, when dealing with a government contract the contractor agrees that neither it nor any assignee will grant any person exclusive right to use or sell the subject invention unless such person agrees to manufacture substantially in the United States. Since many components cannot be manufactured within the United States, it is possible for the contractor to obtain a waiver from the government to such a manufacturing provision.

In my next post I will review Board of Trustees of the Leland Stanford Junior University v. Roche Molecular Systems, Inc., et al., a case that was particularly impactful on the interpretation of the Bayh Dole Act and assignment of contracts in general.

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Protecting Your IP Under Government Contracts, Part 3: Application of Definitions

by Jesse Erlich

In our last post we looked at some key definitions (Invention, Subject Invention, and Made), so now let’s look at the application of those definitions.

If a subject invention falls under or is made under a government contract, the subject invention, at the time of the contract, may be either in the form of a disclosure, a patent application or even a patent. The important factor deals with the actual reduction to practice of the invention. Did the actual reduction to practice take place prior to the contract?

For a contractor or subcontractor to exclude the invention from being a subject invention, first actual reduction to practice of the invention must have taken place prior to the contract. In order to exclude such an invention from being a subject invention, it is extremely helpful for the contractor or subcontractor to have sufficient evidence to support the conception and actual reduction to practice of the invention to be excluded as subject inventions, in that both conception and first actual reduction to practice have taken place prior without the use of government funds and prior to or subsequent to the contract. If this is not the case, and the conception or first actual reduction to practice takes place under the contract, and the contractor or subcontractor must disclose this invention to the government as being a subject invention.

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Limelight Networks v. Akamai Technologies: No Infringement by Committee

by Orlando Lopez

The recent US Supreme Court decision in Limelight Networks v. Akamai Technologies relates to joint infringement. Usually, infringement of a method or process claim in a patent occurs when one entity practices all the steps in the method or process. However, in many systems, for example communication systems, the system includes a server that is owned by one entity, and client systems (Blackberry®s for example) that are owned by another entity. A method or process claim, if written in the most straightforward and logical manner, would be performed in part by the entity that owns the server and in another part by the entity that owns the client system. Infringement of that method or process claim would require joint infringement, where the two entities cooperate in performing the steps of the process. Under present law, direct infringement may not be possible since present law requires that one entity perform all steps in the method or process unless one party is under control or direction of the other party.

Akamai owns a patent having a claim for a method for delivering electronic data using a content delivery network (CDN). Limelight operates a CDN. When Akamai sued Limelight Networks for infringement, Limelight Networks claimed noninfringement since Limelight performs all the steps of the method claim except for one: the step of “tagging” is performed by the user. On appeal, the US Court of Appeals for the Federal Circuit, in a ruling including the entire court, found that, although direct infringement may not have been possible, Limelight could be liable as an inducer of infringement. As stated in the US Supreme Court decision in Limelight Networks v. Akamai Technologies, the entity that owns the server cannot be considered to be inducing infringement since inducing infringement requires that someone be infringing the entire claim.

Unless there is a different ruling on direct infringement, and that ruling stands the test of the US Supreme Court, patent drafters will have to write separate claims: one set of claims where the actions occur only at the server, and another set of claims were the actions occur only at the client. The structure of such claims is awkward, the number of claims is twice that needed, and the Examiner will attempt restriction.

Until the law changes, we will need to write method claims that are performed by only one party.

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Impact of Nautilus v. Biosig

by Orlando Lopez

Prior to the US Supreme Court decision on June 2, 2014, the standard for invalidating a claim, in litigation, due to indefiniteness was that the claim had to be not amenable to construction (interpretation). The Supreme Court overturned that standard in Nautilus v. Biosig. In Nautilus v. Biosig, the Supreme Court held that a patent claim can be found to be invalid due to indefiniteness if the claim, read in light of the patent specification and prosecution history, fails to inform, with reasonable certainty, those skilled in the art about the scope of the invention.

The new standard for invalidity due to indefiniteness is very similar to the requirement for indefiniteness during prosecution. A decision on whether a claim is indefinite requires a determination of whether those skilled in the art would understand what is claimed when the claim is read in light of the specification. MPEP 2173.

The impact of Nautilus on prosecution will be the enhanced awareness of indefiniteness. Terms such as “capable of,” and “can be” should be avoided (see Ex Parte Breed PTAB decision of June 4, 2014).

The impact of Nautilus on litigation is harder to assess. It all depends on how the term “with reasonable certainty” is interpreted by the Federal Circuit. Some caution will result from the Supreme Court decision but the fact that the term in question is discussed in a Markman hearing and a claim construction is arrived at, gives some credence to the reasonable certainty. We will have to wait and see, but for sure, indefiniteness will be back in the quiver of tools for invalidity.

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