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In Memory of Jesse Erlich

by Orlando Lopez

Blog Memoriam_Erlich_Jacob

This post is in memoriam of Jacob “Jesse” Erlich, my good friend, fellow partner and co-author of this blog, who passed away on January 12th, 2015 following a battle with cancer. I’ve chosen to use this post to reflect on the life and career of a wonderful man, who is already greatly missed.

Having spent his early career as a patent attorney for the government, where he rose to Chief Patent Advisor to the U.S. Air Force, Jesse was an extremely well-respected attorney in the area of intellectual property issues, especially those relating to government contracts. After leaving his position at the Air Force, Jesse became a partner at Perkins Smith & Cohen, before joining Burns & Levinson in 2006.

In addition to his impressive legal skills, which he shared on these pages, Jesse was a gifted speaker, a teller of great stories (most of them from his own experiences) and a people lover.

Jesse was a contributing author of 2000 – 2010 Licensing Update, having written the chapter “The Federal Transfer Process, Licenses and Cooperative Research and Development Agreements.” Jesse also co-authored the book Technology and Transfer — The Transaction and Legal Environment.

Jesse was a faculty member of the Advanced Licensing Institute at Franklin Pierce Law School. He had also been appointed to the United States – Israel Science and Technology Commission Task Force: Legal, Patent and Intellectual Property Rights. Jesse was selected for inclusion in The Best Lawyers in America for Patent Law from 2011-2015. In 2014, he was named “IP Licensing Attorney of the Year in Massachusetts” by Corporate INTL Magazine.

Although his long list of accolades speak to his legal abilities, Jesse’s positive attitude, his consensus reaching approach and his ability to engage others, due to his sincere interest others, will be sorely missed by the many patent attorneys he helped and advised over the years.

As we at Burns & Levinson continue to mourn the loss of our trusted friend and colleague, we hope to continue to engage readers of this blog as Jesse would have wanted. We realize though, that we will never be able to replace him.

Orlando Lopez

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Stanford University v. Roche Molecular Systems, Inc.’s Impact on Government Contracts

by Jesse Erlich

A decision by the Supreme Court of the United States on June 6, 2011 has a great impact on the interpretation of the Bayh Dole Act as well as assignment of contracts relating not just to the Bayh Dole Act but to assignments in general. The case, Board of Trustees of the Leland Stanford Junior University v. roche Molecular Systems, Inc., et al., is of particular interest because the assignment of inventions has an impact on contractor relations with the government. Without an assignment of rights by the inventor to the contractor or subcontractor, the contractor or subcontractor cannot grant to the government rights that the government may have in an invention funded by the government, more specifically the confirmatory license discussed in Protecting Your IP Under Government Contracts, Part 1.

This decision points out that the Bayh Dole Act does not automatically vest title to the contractor in federally funded inventions. Title or ownership belongs to the inventor unless the inventor assigns his or her title by contract to another individual or company. The Bayh Dole Act specifically recites that the contractor in federally funded inventions may elect to retain title to any subject invention; that is an invention that has either been conceived or actually reduced to practice under the federal contract. Read the rest of this entry »

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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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