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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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