Cutting edge technology is a driving force behind America’s sustained economic growth; domestic technology and knowledge-based markets are growing at unprecedented rates; new markets are opening to American goods under the influence of free-trade treaties; and companies that specialize in high technology are increasingly global in scope and reach. United States Government has played and continues to play very significant role in the development of these, being the biggest consumer of the cutting edge technology. In today’s marketplace, the private sector is also significant contributor. Some of the good examples are Internet and Wireless technology, which has fueled the growth digital age. The United States Constitution gives the rights to the government to protect the technology and innovations which are the key to maintaining competitive edge over other nations. One of the “Bills Of Rights” is the protection of copyrights and patents, or what we now call “Intellectual Property Rights (IPRs)”.

1. Group Project Presentation By:
Pravin Asar & Elias Wanna
7/18/13
MGT 5211
PROCUREMENT AND CONTRACT MANAGEMENT
Prof. Ellis
FIT – Summer 2013

2. 
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I.
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III.
IV.
V.
VI.
VII.
VIII.
IX.
INTRODUCTION
GOVERNMENT STAND ON INTELLECTUAL PROPERTY
GOVERNMENT CONTRACTING & IP FRAMEWORK
WHAT ARE THE PATENABLE INVENTIONS
DEVELOPMENTS REGARDED AS TRADE SECRETS
COPYRIGHTS
RIGHTS IN TECHNICAL DATA AND COMPUTER SOFTWARE
PRESERVING CONTRACTING RIGHTS
CONCLUSION
INTELLECTUAL PROPERTY IN
FEDERAL CONTRACTS
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3. 
US constitution: “The Congress shall have power to promote
the progress of Science, and useful Arts, by securing for
limited times to Authors and Inventors the exclusive right to
their respective writings and discoveries….”
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US Constitution gives the right to the government to protect the
technology and innovations which are the keys to maintaining
competitive edge over other nations.
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“The issues pertain to the rights of the government, the
contractor, and third parties; they are most likely the most
difficult and complex”
INTELLECTUAL PROPERTY IN
FEDERAL CONTRACTS
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4. 
IP in government contract:
◦ Patent
◦ Copyright
◦ Trade secrets
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Government policies encourages maximum commercial use
of IP developed under government contracts.
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IP developed under contract with NASA, DoE, and DOD
might be subject to higher/stringer government’s rights.
INTELLECTUAL PROPERTY IN
FEDERAL CONTRACTS
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5. 
FAR, DFARS, and other Agencies specific regulations provide
guidance for defining IP rights under government contracts.
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Federal Acquisition Regulation (FAR)
◦ FAR Part 27: Patents, Data, and Copyrights
 Scope: This part prescribes the policies, procedures, solicitation
provisions, and contract clauses pertaining to patents, data, and
copyrights.
◦ FAR Part 35: “Research and Development Contracting
◦ FAR Part 52: Solicitation Provisions and Contract Clauses.
 This part details the government requirements via a series of provisions
and clauses.
◦ “Government Contract Guidebook” Chapter 11 (Intellectual Property)
INTELLECTUAL PROPERTY IN
FEDERAL CONTRACTS
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6. 
Defense Federal Acquisition Regulation Supplement
(DFARS)
◦ The Department of Defense (DOD) is not covered by the FAR on
patent rights.
◦ DOD adheres to separate DFARS instructions, and
solicitation/contract terms.
◦ DFARS Part 227: Patents, Data, and Copyrights
◦ DFARS Part 252: Solicitation Provisions and Contract Clauses
◦ Broad base to use patented inventions during the performance of
government contracts (or use eminent domain)
INTELLECTUAL PROPERTY IN
FEDERAL CONTRACTS
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7. 
Small Business Innovation Research (SBIR) Program
◦ Established in 1982 as part of the SBI Development Act.
◦ Federal agencies required to outsource portion of their research to SBIR
◦ SBIR program three phases:
 Determine the scientific and technical merit of concept
 Future developing concepts for government needs
 Implementation
 Product/services for Federal Government use with non-SBIR funding
 Commercial application of SBIR with non-Federal funding
◦ FAR 35 governs the IP developed under SBIR
INTELLECTUAL PROPERTY IN
FEDERAL CONTRACTS
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8. 
Applicable Laws
◦ Laws of general applicability for purposes of IP are:
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Competition in Contracting Act (CICA)
Contract Dispute Act (CDA)
Tucker Act
Bayh-Dole Act
◦ CICA requires government to seek full and open competition for
all contract.
◦ The CDA & Tuckers Acts provide relief when there is a relief in
contract
◦ The Bayh-Dole Act provides for allocating rights in patentable
inventions created under government contracts.
INTELLECTUAL PROPERTY IN
FEDERAL CONTRACTS
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9. 
Government policy:
◦ Favors granting contractors the title to development.
◦ Promotes commercialization of inventions, and maximum participation of
industry in federally supported research.
◦ Encourages maximum participation of industry .
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Presidential memorandum:
◦ Supplement the government policies
◦ Example: Bayh-Dole Act in 1983 was supplemented by President
Reagan in February 1983; extending the benefits of the act to all R&D
contractors, including large businesses and for-profit organizations.
INTELLECTUAL PROPERTY IN
FEDERAL CONTRACTS
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10. INTELLECTUAL PROPERTY IN
FEDERAL CONTRACTS
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11. 
1. Contractor Ownership and Requirements
◦ Contractors can elect invention ownership per contract (negotiable).
◦ Contractors must disclose to government subject inventions within
certain time frames
 Two month after invention disclosure to the dept. in charge of patents.
 Six month after the contractor becomes aware that an invention has
been made.
◦ Contractor must file within the government to retain the title within 2
years.
◦ Government may file for the patent if contractor fails to or does not intend
to.
◦ Government acquires the title, contractor is normally granted a
revocable, nonexclusive, royalty free license to that invention.
INTELLECTUAL PROPERTY IN
FEDERAL CONTRACTS
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12. 
2. Government Ownership and Rights
◦ The government retains nonexclusive, nontransferable, irrevocable,
paid-up license to practice.
◦ The government may contract for additional rights (sublicense to
foreign government, organization pursuant of existing treaties).
◦ The objective of the government to maximize the use of the IP
◦ Government reserves “march-in” right to grant the license to
government
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If contractor has not taken effective steps to use the IP Rights
To alleviate health or safety needs
Meet requirement of public use
Contractor has not manufactured the product substantially in the US
INTELLECTUAL PROPERTY IN
FEDERAL CONTRACTS
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13. 
3. Third Party Rights
 An invention might fall within the scope of a broader patent.
 In the private sector, licensing or avoiding proprietary technology is a
prerequisite.
 Government might not be enjoined from practicing a patented
invention thought its contractors.
 Third party (patentee) might bring suit for infringement against the
government, but not its contractor.
 Government might pass liability for damage from a suit to its
contractor.
INTELLECTUAL PROPERTY IN
FEDERAL CONTRACTS
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14. 
4. Public Ownership
◦ Developing an invention under government contract does
not suspend domestic laws or international treaties
regarding patentability.
◦ Publication, sale or public use of an invention will initiate
the one-year statutory period within which patent
protection must be thought.
INTELLECTUAL PROPERTY IN
FEDERAL CONTRACTS
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15. 
Trade secrets differ from other forms of intellectual
property
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Differ in the type of info, requirements to protect it.
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Information may be neither new or original
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Divergences and intersections between trade secret
laws and other intellectual property
INTELLECTUAL PROPERTY IN
FEDERAL CONTRACTS
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16. 1.
Contractor Ownership and Rights
• Contactor may claim copyright without government approval
• Government permit contractor’s claim to enhance transfer and
dissemination of data
2.
Government Rights
• Government own copyright of its employees’ work
• Government reserves the right to receive copyrights from
contractors work.
3.
Third Part Rights and Deliverables
• Contactor may not include copyrighted material not produced
under the contract
• Contractor have to obtain for or grant the government a copyright
license.
INTELLECTUAL PROPERTY IN
FEDERAL CONTRACTS
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17. 
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Government owns all rights to technical data produced
under contract.
Commercial data is treated differently on FAR and
DFARS
Computer Software
CIVIL (FAR)
MILITARY
(DFAR)
Commercial
Co-exist with
commercial
license
Same as above
plus form/fit,
etc.
Non-Commercial
Made under
contract
Unlimited
Privately Made by
contractor
Limited rights to data
Restrictive rights to
software
same as above plus
government
purpose rights
INTELLECTUAL PROPERTY IN
FEDERAL CONTRACTS
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18. 
“SBIR Data”
◦ The government obtains limited rights for data produced under SBIR contract for
four years.
◦ During this time, the contractor has exclusive use of data and the government
cannot disclose the data.
◦ Unlike FAR or DFARS, SBIR contractors have less time to commercialize
development made under contract
INTELLECTUAL PROPERTY IN
FEDERAL CONTRACTS
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19. 
1. FAR and DFARS
◦ Preserving rights requires:
 Withholding and identifying technical data and computer software; or
 Appropriately and consistently identify technical data and computer software.
◦ Contractors must mark every copy of the data, software, and
documentation furnished to the government with less than unlimited
rights.
◦ Inadequate marking may lead to forfeiting rightful restrictions and
dedicated valuable IP to the public.
INTELLECTUAL PROPERTY IN
FEDERAL CONTRACTS
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20. 
2. SBIR
◦ SBIR contactors rights are preserved similar to the FAR and
DFARS contractors.
◦ SBIR contractors must be wary when the contract advance to
phase III, the government may regard the SBIR program to be
concluded, and start the clock on the rights periods which when
expires allows the government to release technical data and
computer software to other contractors.
INTELLECTUAL PROPERTY IN
FEDERAL CONTRACTS
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21. 
Government contacts can be good for business in the short term,
however long-term prosperity derived from developments from a
government contract requires special vigilance.

Understand government contract to take appropriate action to
protect IP
INTELLECTUAL PROPERTY IN
FEDERAL CONTRACTS
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