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
Select News & Events
- Law360 Again Names Jamie Beaber a Rising Star
- Law360 Names Steptoe’s Jamie Beaber a Rising Star in International Trade
- Sanctions' Impact on Reconstruction
- Homeland Security Contracting
Publications
- Protecting Your Intellectual Property Rights in Washington
June 13, 2003 - Protecting Your Intellectual Property Rights in Washington
October 22, 2002 - Protecting Your Intellectual Property Rights in Washington
June 14, 2002
