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IP Government Contracts

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

Protecting intellectual property in connection with government contracts and grants 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 lawyers have 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
  • On use of appropriate markings in connection with submissions to the government, including proposal legends  
  • On preparation of NDAs in connection with potential government and commercial business opportunities and potential teaming and/or cooperative agreements
  • A DOE contractor on size status and intellectual property rights under DOE R&D contracts
  • A government contractor on website Terms of Use, Subscription Agreement and use of copyright legends
  • An aerospace contractor on allocation of right in technical data under subcontracts under US government prime contracts and risk mitigation strategies to protect rights in data developed at private expense
  • An electronics component manufacturer in protecting its IP rights in an unsolicited proposal and in responding to a BAA
  • Various clients in preparation of administrative submissions to government agencies opposing release of propriety or business confidential information under FOIA

 Representing

  • Clients in FOIA and Trade Secrets Act injunctive actions in US District Courts and in the US Court of Appeals for the District of Columbia
  • 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

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