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Archive for the ‘SBIR’ Category

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 »


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.


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.


Protecting Your IP Under Government Contracts, Part 2: Key Definitions

by Jesse Erlich

Let’s assume that an individual or company enters into a contractual relationship with the U.S. Government. If that is the case, the contractor or subcontractor would have the right to retain ownership of any invention made under that contract, subject to a grant of a non-exclusive royalty-free license to the government for governmental use and other possible rights. It is therefore essential to know exactly how an invention was made under a government contract is defined. Key definitions are defined as follows:

    • Invention: any invention or discovery that is or may be patentable or otherwise protectable under Title 35 of the United States code;
    • Subject Invention: any invention of the contractor made in the performance of work under the contract; and
    • Made: (1) when used in relation to any invention other than a plant variety, means the conception or first actual reduction to practice of the invention; or (2) when used in relation to a plant variety, means that the contractor has at least tentatively determined that the variety has been reproduced with recognized characteristics.

Technical Data, which I’ll discuss more in an upcoming post, is defined as recorded information, regardless of the form or method of the recording, of a scientific or technical nature (including computer software documentation). The term does not include computer software or data incidental to contract administration, such as financial and/or management information.

Now referring back to inventions made under a government contract (subject inventions).

Under U.S. law, an invention is made when two events take place; that is, conception of the invention is linked with reduction to practice of the invention. This reduction to practice may either be an actual or constructive reduction to practice. Constructive reduction to practice means the invention is not yet actually reduced to practice, but the patent application based on the invention is filed in the United States Patent and Trademark Office (USPTO) in such terms that the invention description is enabling, the patent application is written such that the invention could be made by one of ordinary skill in the art, and meets all the requirements of 35 USC 112. In the case of a filing within the USPTO, actual reduction to practice is not necessary. When dealing with the government under a contract, however, an invention is considered a subject invention when the invention is made; that is, conceived or first actually reduced to practice in the performance of work under the contract.

We’ll explore application of definitions in the next post.


Protecting Your IP Under Government Contracts, Part 1

by Jesse Erlich

It is evident that dealing with the government has many advantages; however, if certain rules and regulations are not followed, particularly those found in The Federal Acquisition Regulations (FARs), this procedure can also be hazardous. For example, a contractor or subcontractor may believe it is entitled to certain rights, both with respect to inventions as well as data, and yet by not following the appropriate procedures those rights may be lost.

In the coming months I will present through a series of blog posts a brief overview of intellectual property rights with respect to government contracts. However, it should not be relied upon as the sole source of information when entering such government contracts. It is highly recommended that prior to entering any government contract, or any contract for that matter, a lawyer familiar with such contracts be consulted for review of the contract prior to execution of the contract by the parties.

Let’s get started.

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