1. Air Force Materiel Command I n t e g r i t y - S e r v i c e - E x c e l l e n c e Developing, Fielding, and Sustaining America’s Aerospace Force INTELLECTUAL PROPERTY RIGHTS IN U.S. GOVERNMENT CONTRACTS AND GRANTS Thomas L. Kundert

2. INTELLECTUAL PROPERTY RIGHTS IN U.S GOVERNMENT CONTRACTS AND GRANTS Thomas L. Kundert Director of Intellectual Property Law Air Force Materiel Command Law Office Wright-Patterson AFB OH 45433-7109 thomas.kundert@wpafb.af.mil Voice DSN 785-2838, Com (937) 255-2838 Fax DSN 785-3733, Com (937) 255-3733 DISCLAIMER: The views presented are those of the speaker and do not necessarily represent the views of the DoD or its Components

3. INTELLECTUAL PROPERTY RIGHTS IN U.S GOVERNMENT CONTRACTS AND GRANTS Helpful Web Sites Association of University Technology Managers - http://www.autm.nethttp://www.autm.net Small Business Administration - http://www.sbaonline.sba.gov/SBIR/indexsbir-sttr.htmlhttp://www.sbaonline.sba.gov/SBIR/indexsbir-sttr.html Frequently asked questions about SBIR/STTR Programs

4. INTELLECTUAL PROPERTY RIGHTS IN U.S GOVERNMENT CONTRACTS AND GRANTS Government Invention/Patent Policy and Objectives Maximize participation of small business firms in Federally supported R&D Promote collaboration between commercial concerns and nonprofit organizations including universities Use inventions in a manner that promotes free competition and enterprise without unduly encumbering future research and discovery Ensure that Government obtains sufficient rights in inventions to meet its needs and those of the public Promote commercialization of inventions made in U.S. by U.S. industry and labor Minimize costs of administering policies in this area

5. INTELLECTUAL PROPERTY RIGHTS IN U.S GOVERNMENT CONTRACTS AND GRANTS Ownership Rights in Intellectual Property Made With Federal Assistance Applicable to all Contracts, Grants, Cooperative Agreements General Rule - Contractor/Grantee/Recipient owns the intellectual property (i.e. patent, copyright, technical data) Government receives nonexclusive, world-wide, royalty- free license for governmental purposes

6. INTELLECTUAL PROPERTY RIGHTS IN U.S GOVERNMENT CONTRACTS AND GRANTS Kinds of Intellectual Property Protection PATENT –Exclusive right to exclude others from making, using and selling new, nonobvious, useful invention for a period of years in exchange for public disclosure COPYRIGHT –Exclusive right to author to print, copy, publish copies of literary or artistic works

7. INTELLECTUAL PROPERTY RIGHTS IN U.S GOVERNMENT CONTRACTS AND GRANTS Kinds of Intellectual Property Protection (continued) TRADE SECRET –Confidential commercial information having economic value because it is secret and which owner takes steps to keep secrets TECHNICAL DATA –Scientific/technical information afforded certain protections under Government contract

8. Inventions Statute - Bayh-Dole Act (35 U.S.C. 200-212) Small businesses and non profit organizations Extended to contractors of any size (E.O. 12591) Regulations - Federal Acquisition Regulation (FAR) Part 27 - Department of Commerce 37 CFR Part 401 - Same rules apply to all Federal agencies IN INTELLECTUAL PROPERTY RIGHTS IN U.S GOVERNMENT CONTRACTS AND GRANTS

9. INTELLECTUAL PROPERTY RIGHTS IN U.S GOVERNMENT CONTRACTS AND GRANTS Copyrights No separate contract clause for copyrights Incorporated in Rights in Data provisions of FARS and DFARS –Contractor may establish claim to copyright –Government receives nonexclusive, royalty-free license

10. INTELLECTUAL PROPERTY RIGHTS IN U.S GOVERNMENT CONTRACTS AND GRANTS Technical Data Similar to trade secret but unique to Federally funded R&D Definition –Data of a scientific or technical nature Computer software –Regardless of the form or media of recording –Marked/labeled Special rules for SBIR-STTR agreements –Gov’t agrees to protect from outside disclosure for minimum of 4 years

11. INTELLECTUAL PROPERTY RIGHTS IN U.S GOVERNMENT CONTRACTS AND GRANTS Invention/Patent Rights in Funding Agreements Bayh-Dole Act (35 U.S.C. 200-212) applies to all funding agreements regardless of agency Contract requirements (37 CFR 401, FAR 52.227-11) - Basic elements “Subject Invention” Disclosure to Government Election by contractor to retain title File patent application

12. INTELLECTUAL PROPERTY RIGHTS IN U.S GOVERNMENT CONTRACTS AND GRANTS Invention/Patent Rights in Funding Agreements (continued) Subject Invention –Conceived or first actually reduced to practice –In the performance of work under the contract Disclosure to Government –Written report describing how to make and use invention –Within 2 months after inventor discloses it

13. INTELLECTUAL PROPERTY RIGHTS IN U.S GOVERNMENT CONTRACTS AND GRANTS Invention/Patent Rights in Funding Agreements (continued) Election to retain title –Notify Gov’t within 2 years of disclosure or before statutory bar File patent application in U.S. –Within 1 year after election or before statutory bar – Foreign filing

14. INTELLECTUAL PROPERTY RIGHTS IN U.S GOVERNMENT CONTRACTS AND GRANTS Contractor Requirements for Licensing Inventions Periodic reports on utilization efforts –March-in rights Substantial manufacture in U.S. Additional requirements applicable to Nonprofit organizations only –No assignment without agency approval –Share royalties with inventors (mandatory) –Balance of royalties must support scientific research or education –License only small businesses

15. INTELLECTUAL PROPERTY RIGHTS IN U.S GOVERNMENT CONTRACTS AND GRANTS Inventions Made by SBIR-STTR Partners Small Business and Research Institution partner each separately own inventions made by its respective employees Agency model STTR provisions –Option for Small Business to obtain exclusive license in invention by Research Institution partner Joint inventions are jointly owned –Each party has undivided ownership interest –Each party has right to use invention –Parties normally consult on filing patents, copyrights, costs, etc