Trademarks and Government Contracting

In his insightful discussion on intellectual property in government contracting, Brandon The webinar delves into the crucial aspects of patents, data, software rights, and the keys to effective IP protection. Contractors are advised by The webinar to carefully examine the authorization and consent provision in their contracts, which empowers the government to grant permission for the use of any patent in the scope of the contract. Should a patent holder file an infringement lawsuit against the contractor, the Court of Federal Claims, with the government as the defendant, is the appropriate venue. Additionally, contractors are obligated to promptly inform the government of any claims regarding patent or copyright infringement and collaborate with the government in presenting compelling evidence. Furthermore, the contractor assumes the responsibility of indemnifying the government for any patent infringement that may arise from their performance under the contract, unless certain conditions are met. The webinar also highlights the significance of the Bayh-Dole Act, which governs the allocation of rights for inventions developed with federal funds, generally granting the patent to the inventor, unless it involves the Department of Energy or NASA.

Contractors should carefully review their contracts for the presence of FAR 52.227-11 or 13, as these clauses determine who maintains ownership of any subject invention. It is important for contractors to promptly inform the government of any subject invention within two months and make a decision to retain ownership within two years. Additionally, it is crucial for contractors to adhere to the substantial manufacturing rule, which mandates that any products embodying the invention must be predominantly manufactured in the United States. While waivers to this rule are possible, they must be based on impossibility rather than cost considerations. The original inventor is responsible for submitting annual utilization invention reports and other required reports. Failure to adhere to the timeline or reporting procedures may result in the government assuming ownership rights. The government also possesses "March in Rights," which grant it the authority to issue a compulsory license to a third party in specific circumstances. Moving on to data rights, it is important to note that the default allocation grants the government unlimited rights to use, disclose, reproduce, prepare derivative works, distribute copies, and publicly perform or display the data. However, the contractor retains the right to assert copyright and use, release, reproduce, distribute, or publish data that is first produced under the contract.

The government is granted a license for commercial items, allowing them to use, modify, reproduce, release, perform, display, or disclose technical data. However, this license is limited to the government and covered government support contractors. On the other hand, for non-commercial items, there are four types of rights available: unlimited, limited, government purpose, and specifically negotiated license rights. The webinar emphasizes the importance of understanding the specific circumstances and dependencies of contracts, highlighting the need to ask for what you want in order to achieve it. He advises that sometimes it may be necessary to negotiate a license that differs from the three previously mentioned categories. Moving on to effective subcontracting, The webinar stresses that higher-tier subcontractors are not permitted to leverage their position to gain rights to technical data from subcontractors or suppliers. He also recommends utilizing the certificate of limited rights in technical data and understanding the distinction between identifying data and delivering data. The webinar further suggests aligning contract clauses, removing unnecessary provisions, and clearly defining objectives when using the certificate of limited rights. In addition, he discusses the importance of including a restrictive legend, distinguishing between proprietary information and technical data, and comprehending the meanings of "jointly generated" and "jointly owned" with regard to foreground intellectual property. Finally, The webinar advises verifying the presence of a clause that restricts the rights of higher-tier contractors and submitting data directly to the government whenever possible.

The webinar also highlights the significance of including a restrictive legend, which serves as a vital tool in distinguishing between proprietary information and technical data. Understanding the meaning of terms like "jointly generated" and "jointly owned" is equally crucial when it comes to foreground intellectual property. Additionally, he offers valuable advice, urging contractors to verify the presence of a clause that restricts the higher-tier contractor's rights and emphasizes the importance of submitting data directly to the government whenever possible.