Introduction to Intellectual Property using the Federal Acquisitions Regulations (FAR) To talk about intellectual property in government contracting, we need to understand that – Bayh-Dole Act was enacted into law (codified at 37 CFR 401) –1982 OMB A-124 issued policy guidance to federal agencies so that a standard patent rights clause was established (found at FAR ) –1984 FAR was amended to insure that all R&D agencies would implement the Bayh-Dole Act

Purpose of Bayh-Dole Establishes uniform federal patent policy Promotes collaboration between commercial entities and non-profits, including universities Universities may retain title to inventions Universities must file patents they elect to own Government retains a non-exclusive license and march in rights Uniform guidelines for granting licenses

Standard Patent Rights Clause FAR Patent Rights (Part 27) What are the elements of FAR – what does this document contain? –Definitions - to understand text –Allocation of Principal Rights – who gets what –Guidelines for invention disclosure, election of title and filing procedures –Conditions under which the Government may obtain title and what rights the university would retain in this case –University obligations to protect the Government’s interests

FAR Patent Rights (cont.) - Subcontracts - Reporting requirements for use of inventions - March – in rights - Special Provisions for contracts with non-profits - Communications specifications (agency specific)

FAR Patent Rights (cont.) Provisions apply to all inventions conceived or first reduced to practice in the performance of a project, whether fully or partially funded by federal dollars University has an obligation to disclose invention to agency within 2 months of internal disclosure University must make decision to retain title within 2 years from disclosure to agency (or sooner if publication of research results takes place) If title is retained, must file patent application within one year (or prior to end of statutory period) If university does not intend to file, agency may file on its own behalf

FAR Patent Rights (cont.) If university retains title, government gets a non-exclusive, irrevocable, paid-up license to practice the invention or have it practiced on behalf of the government (government contractors) through out the world May not assign rights to third parties (except to patent management organization) Must share royalties/income with inventor Any remaining income, after expenses, must be used to support scientific research or education Agencies may request reports on use of invention

FAR Patent Rights (conclusion) Many agencies maintain their own version of this clause Dept of Defense at Dept of Energy at (A) (2) Standard patent rights clause to work from, specifically geared for non-profits and universities. Expectation is that in a FAR based contract, we would see one of these clauses NOTE: these clauses can be and frequently are revised

Rights in Data in Federal Contracts Unlike patent rights, there is no standard approach to data rights With a few exceptions, most agencies offer only vague guidelines and/or definitions. Since 1987, agencies have tried but have been unable to devise a uniform approach to rights in data OMB A-110 (1999 Revision) now defines data

Rights in Data in Federal Contracts How is “data” defined to date? “Data means” recorded information, including technical data and computer software. When do federal rights apply? When data/software is first developed or specifically used or required for performance of the contract.

Rights in Data in Federal Contracts Rights in technical data and computer software outlined in FAR and its supplements Ownership of data is determined by terms of the agreement Obligations under Federal contracts May vary depending on agency, statement of work or source of funds Most require institutional dissemination Normally government receives a royalty free, non-exclusive, irrevocable, world wide license to use, disclose,reproduce, prepare derivative works, distribute copies to public and perform and display publicly the copyrighted data “first produced”

FAR Rights in Data Most agencies (other than DOD, DOE and NASA) use FAR What does this document contain? –Definitions - to understand text –Allocation of Principal Rights – who gets what –Copyright –Release, publication and use of data –Unauthorized, omitted or incorrect marking of data –Protection of limited rights data and restricted computer software –Subcontracts –Relationship to patents –ALTERNATE IV

FAR Rights in Data (cont.) What are the important elements of the clause? Title to data and software belongs to the university Government receives unlimited rights University may establish without prior approval, copyright in scientific and technical articles if they contain data first produced in the performance of the contract and published in professional journals Inclusion of Alternate IV is important because it provides university with the right to claim copyright without limitation in any data, including software

Rights in Data in Federal Contracts There are three different levels of access for government rights to technical data and computer software Unlimited rights – government has rights to data for any purpose, and to have or permit others to do so (solely government funded) Government purpose rights – government has rights and may permit others but must be on behalf of government (government and third party funded) Limited rights – data may be reproduced and used by government but may not without written permission be used or disclosed outside of government – must be MARKED (privately funded)

FAR Rights in Data (conclusion) Why request Alternate IV? Differentiates between data and software –Gives government rights to data –Government cannot distribute software Provides universities with right to claim copyright without limitation in any data (including technical data and software) Required to be used in contracts for basic or applied research to be performed solely by universities Some restrictions apply