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Posts Tagged ‘government contract’

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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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.

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