Don t Give Up the Farm:

Transcription

1 Slide 1 Don t Give Up the Farm: Unique Intellectual Property Concerns in Government Contracting Featuring: - Charles Harris, Associate Deputy General Counsel (Intellectual Property), Department of the Army* - Gerald Trepkowski, Senior Associate General Counsel, The Johns Hopkins University Applied Physics Laboratory - Phillip Ishikawa, Senior Manager for Contracts, Intellectual Property, and Tech Transfer, Advanced BioScience Laboratories, Inc. Moderated by: - David Robbins, Chair, Government Contracts & Grants Practice, Shulman Rogers * Mr. Harris is presenting in his individual capacity and his comments do not reflect the positions of the Department of the Army or the U.S. Government

2 Slide 2 Introduction About National Contract Management Association DC Chapter Increasing importance of Intellectual Property ( IP ) concerns for government contractors and grant recipients Webinar is designed to have three speakers with leading expertise, but slightly different approaches, discuss key issues facing contractors and grantees: HOW contractors can protect their IP WHY your commercial license templates are not good enough for Government work WHAT is important to the Government and associated common pitfalls to avoid WHEN the work is yours and when it belongs to the Government Will start with introductions/opening statements, deal with the four key topics, and then a closing statement and focus on conversation among panelists throughout. 2

3 Slide 3 Introduction to the Panelists and Opening Statements 3

4 Slide 4 The Basics IP Rights Under Government Contracts (Very Generally) Types of rights include rights in technical data and computer software Patent rights Difference in civilian and DoD agency rules, but scheme generally allocated title and license rights Licenses include unlimited rights Limited rights including limited rights technical data and restricted rights in computer software Government purpose rights IP Rights Under Federal Grants In addition to a series of grant-specific rules and regulations, Bayh-Dole Act and agency implementing regulations play large role in assignment of IP rights Reporting requirements Government license But, there are traps for the unwary and areas of nuance that can impact rights allocation. Better to get it right than litigate it later. 4

5 Slide 5 HOW Contractors Can Protect IP Have an IP strategy Is Government funding necessary? What is releasable (potentially)? Drafting agreement and marking documents appropriately 5

6 WHY Commercial Templates Are Role of clauses and statute E.g., first reduced to practice National Contract Management Association, DC Slide 6 Not Good Enough License terms may be subject to reformation in court if inconsistent with procurement law Examples of what might be inconsistent with procurement law Federal Tort Claims Act issues Bottom line: The regulatory regimes are so different that there is limited efficiency savings and likely harm done by repurposing commercial templates. 6

7 Slide 7 WHAT is Important to the Government and Common Pitfalls Open Systems Architecture is potentially disruptive in effect Allocating rights across the spectrum The regulations have a baseline, but more often all is subject to negotiation opening with Government gets unlimited rights Nature of scientific research and avenues for Government to claim increased ownership Cost impact of maximized IP rights for the Government 7

8 Slide 8 WHEN is Your Work Yours, and When Does it Belong to the Government? Follow the money Follow-on/derivative works Bottom line: You MUST have an IP strategy and be thinking about these questions before forming a government contract or applying for a grant. 8

9 Slide 9 Concluding Remarks Questions? Thank you for your attention and we look forward to seeing you at future NCMA DC events. For a calendar of future events please visit: Charles Harris: charles.h.harris34.civ@mail.mil Gerald Trepkowski: gerald.trepkowski@jhuapl.edu Phillip Ishikawa: phillip.ishikawa@ablinc.com David Robbins: drobbins@shulmanrogers.com 9