1. Intellectual Property Rights and the Federal Government
An Overview
DISCLAIMER: The opinions expressed in this presentation do not necessarily represent, and should not be attributed to, the U.S. Department of Energy (DOE), NASA, or the United States Government (USG). Panelists are presenting these materials in their personal capacities, not as representatives of the USG.

2. Civilian Agency Data Policy
Civilian science agencies, e.g. DOE, NASA, NIH, NSF, have a different mission than DOD
Dissemination - make the benefits of the data widely available
DOE – Atomic Energy Act, 42 U.S.C. § 2051; Department of Energy Organization Act, 42 U.S.C. § 7112
NASA – Space Act, 51 U.S.C. § 20112
NIH – Policy for disseminating biomedical research resources, 64 FR (1999)

3. Data v. Technical Data
“Data” means recorded information, regardless of form or the media on which it may be recorded.
The term includes technical data and computer software . . .
“Technical data” means recorded information (regardless of the form or method of the recording) of a scientific or technical nature (including computer databases and computer software documentation).
This term does not include computer software . . .

4. Focus of Data Provisions
What you bring into the arrangement that has been developed at private expense (e.g. “limited rights data” or “background data”)
What is first produced under the arrangement (e.g. “generated data”)
The right to assert copyright in generated data and/or protect it

5. 48 CFR
Unlimited rights means the rights of the Government to use, disclose, reproduce, prepare derivative works, distribute copies to the public, and perform publicly and display publicly, in any manner and for any purpose, and to have or permit others to do so.

6. 48 CFR 52.227-14 The Government has unlimited rights in—
Data first produced in the performance of the contract
All other data delivered under this contract unless provided otherwise for limited rights data or restricted computer software
Proper marking is extremely important
Omitted or incorrect markings. Data delivered to the Government without any restrictive markings shall be deemed to have been furnished with unlimited rights.

7. Limited Rights Data, Restricted Computer Software, Proprietary Data
The Data Protection Spectrum
Unlimited Rights
Data
SBIR/STTR
Protected
Limited Rights Data, Restricted Computer Software, Proprietary Data
Most data generated under federally funded agreements
Data generated under federally funded SBIR/STTR awards
Data generated under government agreements having authorized data protection
Limited to data generated using entirely private funds
Broad government rights to use data.
Gov./Contractor agrees to protect data for 4 years* after delivery of the last technical deliverable
Gov./Contractor agrees to protect data for a defined duration (e.g. 5 years)
Contractor/Sponsor owns the data. The Gov. usually has very limited rights.
Examples:
Most data developed with government funds
Data not developed under EPACT/SBIR/STTR
SBIR/STTR Data
CRADA Protected Info
EPACT Data
NASA Space Act
Proprietary Data
Non-Federal WFO/SPP data
ACT generated Data
No marking requirement
Must be properly marked
Limited rights data are best protected through withholding

8. Transactions Funding Agreements Non-Funding Agreements Contracts
Assistance Awards
Grants
Cooperative Agreements
CRADAs
Sponsored Work (e.g. “Work For Others” or “Strategic Partnership Project” Agreements)
User Facility Agreements
“Other Transactions” Authority Agreements
NASA Space Act Agreements

9. Inventions Bayh-Dole (35 U.S.C. § 200 et seq.)
Applies to R&D “funding agreements” with small business, non- profit, and university contractors
Contractor has the right to elect title to “subject inventions”
“subject invention” means any invention of the contractor conceived or first actually reduced to practice in the performance of work under a funding agreement
“Invention” means any invention or discovery which is or may be patentable . . .
Contractor must disclose subject inventions to Federal agency

10. 48 CFR
Contractor may elect to retain the entire right, title, and interest throughout the world to each subject invention
Federal Government retains certain rights
Government license
March-in rights
U.S. Preference
The Federal Government shall have a nonexclusive, nontransferable, irrevocable, paid-up license to practice or have practiced for or on behalf of the United States the subject invention throughout the world. 48 CFR

11. 48 CFR 52.227-11 Government may obtain title where:
contractor fails to disclose or elect title within the times specified, or elects not to retain title;
in those countries in which the Contractor fails to file patent applications in a timely fashion
in any country in which the Contractor decides not to continue the prosecution of any application for, to pay the maintenance fees on, or defend in reexamination or opposition proceeding on, a patent on a subject invention.
Contractor retains a revocable nonexclusive royalty-free license throughout the world, except where contractor fails to report in timely fashion

12. 48 CFR
March-in rights – Government can require the contractor, assignee, or exclusive licensee to grant license where:
Contractor or assignee has not taken, or is not expected to achieve practical application of the subject invention
Necessary to alleviate health or safety needs which are not reasonably satisfied by the Contractor . . .
Necessary to meet certain requirements for public use . . .
Non-compliance with U.S. Preference clause

13. 48 CFR
U.S. Preference - exclusive right to use or sell any subject invention in the United States, if:
agree that any products embodying the subject invention or produced through the use of the subject invention will be manufactured substantially in the United States, unless;
reasonable but unsuccessful efforts have been made to grant licenses on similar terms to potential licensees that would be likely to manufacture substantially in the United States, or
domestic manufacture is not commercially feasible.

14. Implementation of Bayh-Dole-Large Businesses
DOE - Atomic Energy Act (42 U.S.C. § 2182) and Federal Nonnuclear Energy Research And Development Act of (42 U.S.C. § 5908) require that title vest with the Government
NASA – Under the Space Act (51 U.S.C. § 20135) title vests with the Government
I have lately been referring to 35 USC 210(b) to tie this together. 35 USC 210(a) says B-D takes precedence over Atomic Energy Act, Nonnuclear Energy R&D Act, and the Space Act. 210(b) says B-D does not alter laws in 210(a) with respect to disposition of title for large businesses.

15. Where Bayh-Dole Does Not Provide Right to Elect
DOE and NASA funding agreements with large businesses where title vests with the Government, and the contractor retains a revocable, non-exclusive royalty-free license
(“-13” clause (DOE); “New Technology Clause” (NASA). However, NASA and DOE usually waive title.
Specific Exceptions (e.g. DOE Naval Nuclear Propulsion Laboratories)
“Exceptional Circumstances”

16. Waivers
Both the Atomic Energy Act and the Federal Nonnuclear Research and Development Act provide that title to subject inventions may be waived to the contractors. The DOE waiver regulations are found at 10 C.F.R. 784.
The Space Act also has waiver authority, implemented under NASA regulations at 14 C.F.R. 1245

17. DOE Waivers
Types
Advance Waivers – inventions that may be conceived or first actually reduced to practice in the course of a particular contract
Identified Waivers – invention already made
Class Waivers – class of persons or class of inventions
Scope
Waivers may be granted for a particular field of use, duration of time, or geographical location
U.S. Competitiveness, March-in rights, Government use license

18. CRADAs - 15 U.S.C. § 3710a
Collaborative research with Federal laboratories where funds are not paid to the partner
Federal Laboratories shall ensure that a participating party may retain title to any invention made solely by participant’s employees
Participant’s inventions are “normally” subject to a Gov’t license
Participant has the right to negotiate excl. license in lab inventions for a pre-negotiated field of use (15 U.S.C. § 3710a (b))
U.S. Competitiveness (DOE and NIST) and March-in

19. Sponsored Work (e.g. SPP)
Some agencies have the authority to make their unique facilities and scientific expertise available to the public on a cost reimbursable basis. The work must be consistent with agency missions and the work must not place the facility in competition with the private sector.
Offered at DOE Laboratories, at USGS facilities, and through NASA Space Act Agreements at NASA Facilities

20. User Facility Agreements
Agencies have unique facilities and equipment that may be made available to outside users for their own use either for pre-competitive or proprietary research, and on a full or partially reimbursable basis.
DOE Laboratories, NIST, and NASA

21. NASA Grants, Cooperative Agreements
Small Business, Non-profit, University – 2 C.F.R. Part , incorporates by reference with little modification 37 C.F.R. § , which is parallel to the FAR clause
Large Business (New Technology) – 2 C.F.R. Part (like 48 CFR for contracts)
Cooperative Agreements, involve more NASA interaction:
Small Business, Non-profit, University – 14 C.F.R. §
Large Business - §
Both contain “Preference for U.S. Manufacture”: products embodying subject inventions or produced through the use of subject inventions shall be manufactured substantially in the United States, which may be waived upon a showing that domestic manufacture is not commercially feasible

22. NASA Waiver Regulations Updated May 2015
Changes include updates to:
Waiver Policy ( )
Citations to the United States Code, to reflect change from Title 42 to Title 51
Clarify the requirements and procedures for petitioning for a patent waiver so they follow more closely the terms of the Space Act ( )
Add grounds for denial of a petition for waiver of foreign rights ( ).

23. NASA Waiver Authority 14 CFR Part 1245
Goals: provide incentives to foster inventiveness and encourage invention reporting; provide for the widest practicable dissemination of new technology resulting from NASA programs, and to promote early utilization, expeditious development, and continued availability of this new technology for commercial purposes and the public benefit.
NASA regulations, like DOE’s regulations, provide for both advance and identified waivers
May apply to foreign rights
Government reserves a Government use license, march-in rights, U.S. Preference

24. NASA Space Act Agreements
Space Act Agreements are pursuant to NASA’s “other transactions” authority, 51 U.S.C. § 20113
If a nongovernmental partner does not perform work of an inventive type for NASA, then NASA can tailor the allocation of invention and patent rights according to the activities of the SAA and the contributions of the parties. Because most SAAs do not involve work of an inventive nature being performed by the partner for NASA, NASA obtains no rights in inventions made solely by the partner under most SAAs.

25. Space Act Agreements
Reimbursable – NASA’s costs are fully reimbursed by the partner in full or in part, used where NASA’s unique resources are not being used fully for mission needs
Nonreimbursable – each party bears its own costs for mutually beneficial research
Funded – appropriated funds are transferred to the partner to accomplish a NASA mission, used where contract, grant or cooperative agreement won’t accomplish goal.

26. NASA Space Act Agreements
Partner is not performing work for NASA, with low probability that invention may result : The Short Form invention and patent rights clause ( ):
(e.g., use of facilities to provide test and evaluation of a partner’s hardware)
no background rights in IP to be acquired.
If an invention is made, each party keeps rights to its own IP and for joint inventions, the parties will discuss and agree on rights and responsibilities for the filing of patent applications, and the licensing of such applications and resulting patents.
The Short Form may be applicable for both reimbursable or nonreimbursable SAAs

27. NASA Space Act Agreements
Partner is not performing work for NASA, with medium or high likelihood that work of an inventive type will result, the Long Form invention and patent rights clause ( ):
each party keeps rights to its own IP
NASA may negotiate a license to use a partner invention
NASA will use reasonable efforts to grant the partner a license to NASA inventions
NASA may agree to refrain from exercising its undivided interest in joint inventions in a manner inconsistent with the partner’s commercial interests or may use reasonable efforts to grant the partner an exclusive or partially exclusive license in its undivided interest.
Any license to the partner will be subject to the retention of a Government purpose license
Reimbursable SAAs with full cost reimbursement to NASA, NASA will use reasonable efforts to limit use under the Government purpose license to use by or on behalf of NASA for research, experimental, or evaluation purposes

28. NASA Space Act Agreements
Where a partner is performing work for NASA, regardless of the probability that new inventions will result, and patent rights sample clause :
Probably not apply to Reimbursable SAA
Consider whether R&D is directed to a cooperative effort “with NASA” rather than a directed effort “for NASA” and whether partner is doing research for its own commercial market or just to develop a product/service for NASA
Consider whether work to be performed by the partner under the SAA is required by NASA in order to meet a specific identified mission or programmatic requirement
Clause looks very much like the standard large business patent clause, with preference for U.S. manufacture. Waiver regulations apply.

29. takeaways
Be sure agreements specify in advance IP disposition and rights
Identify the nature of need or reason for interaction
different types of agreements based on who is doing research and for whose benefit
Federal Government or Federal Laboratory?
whether gov’t or contractor IP provisions apply
can sometimes be both