Government Contractor IP and Trade Secret (Reverse FOIA) Protection

Doing business with the US government raises a number of issues relating to the allocation and protection of rights in intellectual property:

  • Allocation of  rights in inventions conceived or reduced to practice under contracts or grants
  • Allocation of rights in technical data and computer software developed or provided under government contracts
  • Protection of rights in information included in proposals submitted to the government
  • Disclosures of  company-confidential business information or trade secrets to competitors under the Freedom of Information Act (FOIA)
  • Negotiation of  nondisclosure agreements
  • Allocation and protection of rights in intellectual property in connection with subcontracts or teaming agreements

To protect intellectual property in connection with government contracts and grants, the owner of the IP is subject to a number of procedural requirements, including, for example, requirements for disclosure of inventions and for identification or marking of information. Failure to comply with those requirements puts a company at risk of losing valuable intellectual property rights. 

Representative Matters

Steptoe has advised and represented clients on various government contract and grant-related intellectual property issues:  

Advising

  • On allocation of rights in technical data and computer software under Government contracts for commercial items and non-commercial items 
  • On rights and obligations under patent rights clauses and in preparation of patent applications on inventions conceived or reduced to practice under government contracts and grants
  • An R&D contractor in negotiation of a firm, fixed-price, government-purpose license for computer software developed at private expense
  • A government contractor on a proposed transfer by ARPA of unlimited rights data to a third party and a request that the contractor agree to grant the third party an exclusive license for purposes of commercialization
  • On issues of allowability of costs of preparation of invention disclosures, preparation and filing of patent applications, and for general advice on intellectual property issues
  • A DOE contractor on small business size status and intellectual property rights under DOE R&D contracts

 Representing

  • Clients in FOIA, Reverse FOIA, and Trade Secrets Act injunctive actions in US District Courts and in the DC Circuit Court of Appeals  
  • A major defense contractor in a civil False Claims Act qui tam case based on alleged failure to comply with FAR patent right clause
  • Government contractor clients in trade secret litigation between prime contractors and subcontractors and between competing contractors involving former employee and proprietary data issues
  • Government contractors in bid protests involving proprietary data and unfair competitive advantage issues
  • A medical-research institute in negotiation of collaborative research agreements   
  • Contractors in assertion of claims of patent infringement by the US government, including assertion of an administrative claim

Select News & Events

Publications