1. 1 Bryan A. Geurts, Chief Patent Counsel, Chris Edwards, Patent Counsel January 26, 2010 THE LIFE OF THE MIND: Intellectual Property and Data Rights Procurement Training

2. 2 Intellectual Property (IP) What is IP? How to Protect IP Why is IP important? Patent and Data Rights Clauses –FAR –NASA FAR Supplement Software Handling 3rd Party Proprietary/Govt. sensitive information –Administratively Controlled Information

3. 3 What is IP? Valuable intangible property created by the human mind. Provided for in the Constitution –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. Art. 1, sec. 8, cl. 8.

4. 4 What is IP? Patent - A grant of a property right by the Government to an inventor which allows the inventor “to exclude others from making, using, or selling the invention.” Copyright - A form of protection provided by U.S. law to authors of “original works or authorship” fixed in any tangible medium of expression. Trade Secrets - A formula, a device, or other information that is secret and gives a commercial advantage over competitors who do not know or use it. Trademarks - Anything used in the marketplace to distinguish goods or services of one source from those of other sources. Typically, it is a word or symbol, but it can also be other things.

5. 5 Patent Patent - A grant of a property right by the Government to an inventor which allows the inventor “to exclude others from making, using, or selling the invention.” –Utility. Machines. Articles of Manufacture. Compositions of Matter. Processes. Improvements. –Design. –Plant. Right to exclude others from making, using or selling the claimed invention. Duration - 20 years from patent application filing date

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7. 7 Copyright A form of protection provided by U.S. law to authors of “original works or authorship” fixed in any tangible medium of expression. Types of works - literary, dramatic, musical, artistic, and others (including software) Copyright owner has enumerated rights to reproduce (make copies), prepare Derivative Works, distribute, perform, and display Duration –Individuals - life of author plus 70 years –Companies (works made for hire) 95 years from publication

8. 8 Copyright Civil Servant authored works are “Government works” –No copyright in the US –Copyright outside of US Government can own copyright in the US by receiving assignment of rights from contractors who authored works FAR 52.227-14, as modified by NFS 1852.227- 14, allows NASA to control copyright in work created under NASA contract

9. 9 Trademark Anything used in the marketplace to distinguish goods or services of one source from those of other sources. Typically, it is a word or symbol, but it can also be other things. Prevent others from using mark Likelihood of confusion is the test Unlimited duration if properly protected Examples –NASA Meatball –NASA Worm

10. 10 Trade Secret Any information that allows you to make money because it is not generally known. A trade secret could be a formula, computer program, process, method, device, technique, pricing information, customer lists or other non-public information. If the economic value of a piece of information relies on it being kept private, it could be a trade secret. Unlimited duration if properly protected U.S. Government cannot have trade secrets, but may withhold technology for different reasons: –National Security –Up to 5 years to preserve rights Example –Coca-Cola

11. 11 Why is IP important? To insure that the Government can use the technology/information it pays to develop Identify use (licensing) and fees up front for incoming/background technologies Full and open competition Government honors others’ IP rights Government Employees covered by Trade Secrets Act (18 U.S.C. § 1905)

12. 12 Patent Rights Definitions –Invention means any invention or discovery that is or may be patentable –Subject Invention means any invention of the contractor conceived or first actually reduced to practice in the performance of work under a Government contract

13. 13 Patent Clauses 52.227-1 Authorization and Consent, Alt I for R&D 52.227-2 Notice and Assistance Regarding Patent and Copyright Infringement 52.227-3 Patent Indemnity - Commercial 52.227-11Patent Rights - Ownership by the Contractor (and NFS) –Small Business and Non-Profit 1852.227-70 New Technology –Large Entities 1852.227-72 Designation of New Technology Representative and Patent Representative 1852.227-71 Requests for Waiver of Rights to Inventions 1852.227-84 Patent Rights Clauses

14. 14 Authorization and Consent 52.227-1 is generally required (and flows down) –Not required for simplified acquisitions or performance of contract is entirely outside U.S. –Basic clause gives authorization and consent to infringe patents whose inventions are either (1) embodied in any delivered item accepted by Government or (2) whose use necessarily results from compliance with written specs/provisions of contract or written CO instructions Alt. I is required for R&D contracts –Much broader: Authorizes infringement of patents in performance of contract Result –Prevents injunction and requires infringement action to be brought against Government in U.S. Court of Federal Claims

15. 15 Notice and Assistance re Infringement 52.227-2 required for all supply, service, or R&D solicitations and contracts (and flows down) –Not required if using simplified acquisitions or performance of contract is entirely outside US Requires contractor to –notify Government of patent or copyright infringement claims –Furnish all evidence and information on request At government expense unless contractor indemnifies Government

16. 16 Patent Indemnification Government may authorize and consent to infringement yet still require indemnification (52.227-3 or -4 (construction contracts)) –For infringement resulting from performing construction contracts or contracts for commercial supplies or services (including minor modifications) –May be required for specific components, parts or services under sealed bid Not required for contracts where 52.227-1 with Alt I is present—R&D contracts Government may waive indemnification as to specific patent(s) if in the Government interest (include 52.227-5 along with -3 or -4) – consult OPC

17. 17 Rights to Inventions Appropriate patent rights clause determined by size/status of contractor/subcontractor Small business/nonprofit –52.227-11 modified by NFS 1852.227-11 –Permits Contractor to Elect Title and retain Patent Rights Large Entity –NFS 1852.227-70 New Technology –Requires Contractor to Request either advance or specific waiver to obtain title –Must also include NFS 1852.227-71 Requests for Waiver of Rights to Inventions If neither 52.227-11 nor 1852.227-70 is present, contact patent counsel Include 1852.227-72 Designation of New Technology Representative and Patent Representative in either case Include NFS 1852.227-84 Patent Rights Clauses in solicitations where ultimate awardee may be small entity

18. 18 Patent Issues Reporting Inventions –COTR and Contract Close-Out Waivers (for large entities) –Advance waiver/Identified waiver Election by small businesses, non-profits, and universities Licensing –Negotiate as soon as possible

19. 19 Data Definition –Recorded information, regardless of form or the media on which it may be recorded. The term includes technical data and computer software. –Does not include information incidental to contract administration, such as financial, administrative, cost or pricing, or management information.

20. 20 Drafting Requirements/Rights Will data be produced, furnished, acquired or specifically used in meeting contract performance requirements? –If yes -- must delineate rights and obligations of Government and contractor regarding use, duplication, and disclosure Generally –Rights in Data-General (52.227-14/1852.227-14 using alternates as appropriate) –Representation of Limited Rights Data and Restricted Computer software (52.227-15) –Rights in Data – Special Works (52.227-17) – special cases, e.g. open source software –Rights to Proposal Data (52.227-23) –Additional Data Requirements (52.227-16) Also, remember that –other clauses may be necessary –Cooperative Agreements--standard clauses not always sufficient, need to tailor data clause to address Government needs/uses

21. 21 Drafting Requirements/Rights The Statement of Work (SOW) should accurately state the type, quality, quantity and delivery time for each desired data item. When developing SOW, also determine the desired/needed Government rights in the data and software. Ensure that the contract language adequately captures the Government’s desires/needs. If software will be developed: –Will software be a deliverable? Is delivery of source code desired? If so – specifically state as a deliverable Basic data guidance: –FAR -- Subpart 27.4 - Rights in Data and Copyrights –NFS -- Subpart 1827.404 - Rights in Data and Copyrights

22. 22 Data Clauses 52.227-14 Rights in Data-General (and NFS) 52.227-15 Representation of Limited Rights Data and Restricted Computer Software 52.227-16 Additional Data Requirements 52.227-17 Rights in Data-Special Works (and NFS) 52.227-19 Commercial Computer Software-Restricted Rights (and NFS) - replace with 1852.227-86 (see below) 52.227-20 Rights in Data-SBIR Program 52.227-21 Technical Data Declaration, Revision, and Withholding of Payment-Major Systems - rare 52.227-22 Major System-Minimum Rights - rare 52.227-23 Rights to Proposal Data (Technical) 1852.227-86 Commercial Computer Software-Licensing

23. 23 Rights in Data-General Government has unlimited rights in: –data first produced in performance of contract –form, fit and function data –data in the form of manuals or instructional and training material for installation, operation, maintenance and repair –all other delivered data other than limited rights or restricted computer software –CO permission needed before contractor can apply background data to contract performance

24. 24 Rights in Data-General Contractor has right to: –use, release to others, reproduce, distribute, or publish data first produced or specifically used by contractor in performance of contract except computer software and as otherwise specified contractor may not copyright, publish or release to others any computer software first produced in performance of contract without CO’s prior written permission contractor is allowed to publish and copyright scientific and technical articles based on data first produced in performance of contract not subject to other restrictions (see Handling of Data)

25. 25 Rights in Data-General Alternate I Definition Limited Rights Data - rare Alternate II Delivery of Limited Rights Data - be sure to add any desired extra data purposes - see FAR 27.404(d)(1) for examples –use by support service contractors and use by other contractors participating in the Government program Alternate III Restricted Computer Software Alternate IV - copyright for Universities - do not use without Patent Counsel input Alternate V Inspection of Withheld Data Must negotiate for sufficient rights when using Alt II and III - consult Patent Counsel

26. 26 Representation of Limited Rights Data and Restricted Computer Software FAR 52.227-15 Use in all solicitations for R&D contracts Answers given by contractor are important Answers indicate whether contractor desires to impose restrictions on background data Aid to determine whether to use Alternate II and/or III CO to consult with COTR and Patent Counsel regarding restrictions

27. 27 SBIR Contracts If marked with SBIR Rights Notice, Government may not disclose data to any party, other than support service contractor, for 4 years after acceptance of last deliverable Contractor can copyright all data (including software) without permission from CO CO permission required to apply background data to contract performance - CO permission is critical as no ability to require delivery of limited rights data/restricted rights software Must negotiate up front with Patent Counsel input

28. 28 Contractor Request for Permission to Assert Copyright CO permission required to assert copyright for all data, other than technical publications (unless Alt IV applies) Contractor to formally request right to assert and retain copyright CO to consult with COTR and Patent Counsel –Contractor to provide commercialization plan If decide to grant permission, then modify contract to require assignment to Government if fail to commercialize

29. 29 Government Purpose License and Government Assignment of Copyright License retained by Government –For material other than software: can reproduce, prepare derivative works, distribute to public, perform or display publicly –Software: can reproduce, prepare derivative works, perform or display publicly, but not distribute to public Assignment of Copyright –NASA can request assignment from contractor and license to others –NASA can require assignment from other than SBIR

30. 30 Software Off-the-shelf Computer Software –Vendor’s standard license agreement may be integrated into the acquisition –License may be signed by the contracting officer –Office of Chief Counsel needs to review prior to signature or acceptance for integration into acquisition External Release –NPR 2210.1A – External Release of NASA Software; Center Software Release Authority –Allows for several release categories Software developed under contract potentially has both copyright and patent protection available. Software must be disclosed (Patent Rights/New Technology clauses) like any other innovation.

31. 31 Open Source Open source is one release category allowed by 2210.1 Free distribution of source code and modifications Incoming –How to incorporate into NASA software –Contract provisions –Distribution requirements Outgoing –Benefit back to NASA - use improvements –Rights - NASA Open Source Agreement

32. 32 Delivered Data Is there a restrictive marking/notice/legend on data? Is the marking appropriate/authorized? –If not, follow contract (52.227- 14/1852.227-14) for appropriate treatment

33. 33 Proprietary Data Marked with notice or legend such as: –limited rights data, restricted computer software –SBIR data –proposal data (technical) –Copyright –Confidential or Proprietary Confidential Disclosure Agreements (CDA’s)- generally disfavored - consult Patent Counsel Severe penalties exist for improper handling - Trade Secrets Act - loss of federal job, fine, jail

34. 34 Government Provided Data Administratively Controlled Information - –Export control/ITAR information –Privacy Act Information –Trade secret/proprietary information –Inventions that are or may become subject of patent application –Limited Rights Data/Restricted Rights Computer Software –Information Subject to 5-year NASA withholding period Use ACI coversheet (NF 1686) and mark each page

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