Patent Rights Under Government Contracts

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PATENT RIGHTS UNDER GOVERNMENT CONTRACTS

By W. Jay DeVecchio

here are various forms of intellectual property and intellectual property rights that can arise in Trelation to Government procurement contracts. Developing computer software or hardware may result in trade secrets protectable as “restricted rights” in software or “limited rights” in technical data.1 Those software and data are also subject to copyright protection.2 And, if the underlying development gives rise to “inventions,” then patent rights may accrue.3 These categories of intellectual property are distinct from one another under the regulations, but they often arise from a common set of events. Sorting through those events and the regulations is important for contractors and the Government to ensure that intellectual property rights are correctly asserted. These issues are particularly current with respect to patent rights in the light of recent decisions from the U.S. Supreme Court addressing basic patent principles,4 as well as decisions from the U.S. Court of Appeals for the Federal Circuit and a U.S. District Court addressing patent principles in the unique context of IN BRIEF contracting with the Federal Government.5 Patent Rights Accordingly, this Briefing Paper will describe Application To Government Contracts in simple, practical terms what the core require- ■ Subject Invention ments are for creating, protecting, and allocating ■ Disclosure patent rights under Government contracts as ■ Election well as how to sort out patent rights from other ■ Failure To Disclose intellectual property rights under those contracts. ■ Continuing Obligations The Paper also addresses the issues of authorization and consent and indemnification in patent Authorization & Consent litigation under Government contracts. Patent Indemnity

Patent Rights vs. Data Rights W. Jay DeVecchio is a partner in the law firm of Jenner & Block LLP.

Patent Rights or reverse engineer your invention. At least that is the theory. The quid pro quo is that the Broadly, and somewhat simplistically, the pat- essence of your invention, described in the patent laws cover inventions (discoveries) of new, ent itself as a series of “claims,” is published for nonobvious, and useful things, processes, and all the world to see. Therefore, the monopoly designs (as well as certain varieties of plants). This granted to you by the patent laws is only as good is described in 35 U.S.C.A. § 101, with respect to as your ability to police your invention and to “utility” patents, as follows: sue those who would infringe it, remembering Whoever invents or discovers any new and useful also that your patent is a target for others to process, machine, manufacture, or composition invent around. of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to This raises the question that most companies the conditions and requirements of this title. should systematically consider: whether—when Similarly, the patent provision with respect to it develops something that would qualify for a design patents, 35 U.S.C.A. § 171, provides: patent—a company will patent the development or whether, instead, it will hold the development Whoever invents any new, original and ornamen- closely as a trade secret? Trade secret disclosures tal design for an article of manufacture may obtain a patent therefor…. and “monopolies” are largely in your control. Answering this question requires an informed There are some obvious (and less obvious) decisionmaking process, from the beginning of limits on the scope of what is patentable, with the development, that considers at least these fac- general notion being that laws of nature (gravity), tors: physical phenomena (ice), and abstract ideas (a (1) Is the Government the only market? If so, trip to the moon) are not patentable. Thus, for there may be less reason to patent because, example, Albert Einstein could not have patented as discussed below, the Government can “E=mc2” because it is a “manifestation of…na- use your invention or have your competi- ture, free to all men and reserved exclusively tors do so. Limited or restricted data and to none.”6 The application of the laws of nature software rights may be more valuable. may, however, be patentable (e.g., an antigravity machine). Similarly, mathematical algorithms (2) How easy will it be to reverse engineer the may not be patentable standing alone, but may item? If it is easy, obtaining patent protec- be patentable when incorporated into a process, tion may be the better approach. If not, such as a computer program. then holding the development closely as a trade secret may be best. In all events, if you meet the qualifications for patentability, then you may obtain a patent, (3) What is your real will and ability to police which in the United States is a legal monopoly and to litigate patent infringement as op- on the invention for 20 years.7 That means es- posed to your will and ability to control sentially that no one else may make, use, sell, your trade secrets?

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Application To Government Contracts The triggering event under the FAR for determining a party’s rights is whether there has Considering what is patentable in the context been a “subject invention,” which is an invention of Government contracts means recognizing that conceived or first actually reduced to practice in inventions may well occur during the performance the performance of work under a Government of a Government contract, particularly if it is a contract or subcontract.14 Achieving a subject contract for research, design, or development. invention further triggers disclosure and election In turn, this raises the question as to the alloca- responsibilities for contractors. tion of patent rights between an inventor and the Government. ■ Subject Invention Historically, the tendency of Government agencies was to take title to inventions that arose dur- A “subject invention” comprises four elements ing performance of a Government contract. Over under the FAR definition. It is (1) “any invention time, Congress recognized this was a disincentive of the contractor” (2) “conceived” or (3) “first both to the development and commercialization of actually reduced to practice” in (4) “the perfor- 15 promising technology because contractors could mance of work under a Government contract.” not take advantage in the commercial marketplace (The fourth element requires there be a nexus of their discoveries. This led to the passage in between the invention and the work performed 1980 of the “Bayh-Dole Act”,8 which grants to under the contract. This is an issue of fact that nonprofit organizations and small businesses the will vary both with the nature of the work and 16 right to elect to retain title to inventions devel- the breadth of the contract. ) oped under federally funded contracts, grants, The term “invention” as used in this regulation or cooperative agreements, with the Government is defined differently than in the patent statutes. acquiring a nonexclusive, irrevocable, paid-up It is “any invention or discovery that is or may be license.9 In 1983, a presidential memorandum patentable or otherwise protectable” under the extended this allocation of rights to large busi- patent code.17 Therefore, contractors need to take nesses and profitmaking organizations.10 a liberal view of whether something they discover This presidential policy was adopted by the during the course of a Government contract Federal Acquisition Regulation and forms the may be patentable because, as discussed below, basis for FAR’s policy on patents, which is that the the contractor’s rights to assert title will depend contractors generally will have the right to retain upon whether it discloses a subject invention, and title to inventions made in the performance of work a subject invention need not be one that, with under a Government contract and the Government any certitude, is patentable. The other important will obtain a broad license.11 There are statutory point to recognize about the FAR definition is exceptions to this policy, principally for contracts the disjunctive between conceived or first actually with the Department of Energy and the National reduced to practice.18 That is, the Government Aeronautics and Space Administration, which are will obtain rights and the contractor will have required by statute to take title, although these obligations with respect to a subject invention requirements can be (and often are) waived.12 either if it was conceived during the course of a Government contract or conversely if it was first The FAR’s provisions on patents are con- reduced to practice under a Government contract tained in FAR Subparts 27.2 and 27.3, with the even it was conceived previously. implementing clauses at FAR 52.227-1 through 52.227-13. The Department of Defense follows There is a body of patent law addressing the the FAR closely, with a few minor supplementary issue of conception, although the issue appears provisions in Defense FAR Supplement Subpart to arise relatively infrequently in Government 227.3. In contrast, due to their statutory ante- contracts. The general principle is that the cedents, the DOE and NASA have different and invention must be sufficiently concrete in the more comprehensive requirements in their FAR mind of the inventor that it could be reduced supplements.13 to practice:19

The date of conception is the date when the contract (e.g., under an independent research inventive idea is crystallized in all of its essential and development project) but the workability of attributes and becomes so clearly defined in the mind of the inventor as to be capable of being the invention is demonstrated for the first time converted to reality and reduced to practice by under a Government contract. In this circum- the inventor or by one skilled in the art. stance, the invention is a subject invention even The problem with this definition of “concep- if the patent has already issued because the first tion” is that it is hard to establish when this oc- actual reduction to practice occurs under the curs absent some physical manifestation of the contract. idea—such as an internal development record If something is a subject invention, then it fits or laboratory notebook (a notoriously unreliable within the allocation of rights under the three format). Accordingly, there is a corollary practical FAR patent rights clauses. Those clauses are FAR requirement that there be some physical proof 52.227-11, “Patent Rights—Retention by the of conception. Ask yourself the question: What Contractor (Short Form),” which generally is procedures does my company have for rigorously used when the contractor is a small business or a and systematically documenting conception or nonprofit;25 FAR 52.227-12, “Patent Rights—Re- reduction to practice? tention by the Contractor (Long Form),” which There is also a body of patent law on the issue is used with entities that are not small businesses 26 of when something has been reduced to practice, or nonprofits; and FAR 52.227-13, “Patent with variations on what that means depending Rights—Acquisition by the Government,” which 27 upon the type of invention. In essence, reduction is used infrequently. to practice occurs when an invention has been These clauses must be “flowed down” to all sub- embodied in some form that demonstrates the contractors, regardless of tier, that are performing invention’s “workability.” The extent of build- experimental, developmental, or research work.28 ing or testing that must be conducted to dem- And, as with the standard data rights clauses, the onstrate whether the invention works depends flowdown patent rights clauses are intended to upon the kind of invention. The workability of allocate rights and obligations between the sub- simple inventions may be discernible merely contractor and the Government, not between 20 by looking at them, while other inventions the subcontractor and the prime.29 may be tested in laboratories,21 while in some cases (notably involving aircraft) courts have ■ Disclosure held that inventions have to be demonstrated under actual operating conditions.22 Generally, The rights the Government obtains in a subject the courts apply a commonsense approach, invention depends, however, in the first instance which “prescribes more scrupulous testing on the nature and timing of the contractor’s under circumstances approaching actual use disclosure of the invention. The principles are conditions when the problem includes many straightforward. If a company first conceives of uncertainties.”23 However one determines or first reduces to practice an invention under workability, if it exists for the first time in the a Government contract, then it must disclose performance of a Government contract (or that invention to the Government promptly in subcontract)—and if the invention relates to accordance with the contract’s requirements. If the work under the contract—then it will be the company makes this disclosure, then it may a subject invention. elect to keep title to the patent, with the Govern- ment getting a “Government purpose” license Filing a patent application is considered by in the invention.30 Even if the company declines the U.S. Patent and Trademark Office to be a title to the disclosed invention, it will still get a 24 constructive reduction to practice, but the subject license to the patent.31 invention definition hinges on the first actual reduction to practice. This distinction is important These disclosure requirements are described if the invention is conceived and the patent ap- in the patent rights clauses. For contractors that plication filed independent of any Government are other than small businesses or nonprofits,

© 2007 by Thomson/West ★ JUNE BRIEFING PAPERS 2007 ★ the “long form” clause, FAR 52.227-12, requires a must occur within eight months of the initial disclo- contractor initially to disclose a subject invention sure (either the 2-month or 6-month disclosure) to the Contracting Officer “within 2 months after and often is made by companies at the same time the inventor discloses in writing to Contractor as the initial disclosure. In all events, the election personnel responsible for patent matters or within must be made.39 Even if the contractor declines to 6 months after the Contractor becomes aware that take title, however, it will “retain a nonexclusive, a subject invention has been made, whichever is royalty-free license throughout the world in each earlier.”32 The two-month trigger assumes there is subject invention.”40 This license extends to the someone within the contractor’s organization (or contractor’s domestic subsidiaries and affiliates perhaps an external patent counsel) responsible and includes the right to grant sublicenses. It is for patent matters.33 If not, then the six-month not, however, transferable without the approval period applies by default. of the agency except as part of a corporate suc- cession.41 This disclosure takes the form of a “written report” that not only identifies the contract under Election brings with it further obligations for which the invention was made as well as who the the contractor to pursue and maintain patents—or inventor is, but also provides technical details risk losing title. Specifically, the Government sufficient to convey “a clear understanding…of may obtain title notwithstanding a contractor’s the nature, purpose, operation, and physical, election if the company fails to file its initial pat- chemical, biological, or electrical characteristics ent application, in the United States, within one of the invention.”34 Additionally, the disclosure year after its election or fails to file for foreign must identify and describe any publication, sale, patents within 10 months of the initial U.S. patent or public use of the invention.35 application.42 The Government also may obtain title if the contractor “decides not to continue The DOD has a standard form—DD Form 882, the prosecution of any application for, to pay the “Report of Inventions and Subcontracts”—that maintenance fees on, or defend” a patent on a should be used to make these disclosures.36 But subject invention.43 The figure at the top of the regardless of whether you do business with the following page illustrates these timelines under DOD or not, this disclosure obligation cuts across FAR 52.227-12. all federal procurements and obligates contractors to have a process in place for tracking and ■ Failure To Disclose describing each stage of development.37 Having such a process is important not only for patent As noted, if a contractor discloses an inven- reporting purposes, but also for determining tion but either it elects not to retain title or whether an item, component, process, or soft- the Government later obtains title, then the ware has been developed at private expense at contractor still will retain a license to the the lowest practicable component level; those are patent.44 On the other hand, if the contractor the touchstones for limiting and restricting the fails to disclose in the first instance—and if the Government’s rights in technical data and com- Government acts within 60 days after learning puter software.38 Stated differently, all companies of the contractor’s failure to disclose—then doing business with the Government ought to the contractor loses all rights in the subject have a uniform method, form, and process for invention and receives no license.45 Thus, the tracking development even if they never intend only prudent course for a contractor that is to patent. concerned about its patent rights is to disclose all subject inventions, recognizing again that the definition under the FAR of subject ■ Election inventions includes inventions that “may” be The next step is the contractor’s election to patentable.46 Stated differently, when in doubt retain title or not. Under the “long form” clause, about whether an invention is patentable, dis- FAR 52.227-12, used where the contractor is other close it. If, on the other hand, the result of a than a small business or a nonprofit, this election development effort is plainly not an invention,

Reporting Timeline

Initial Disclosure Initial Patent Filing Internal Elect To Retain Title Foreign Filing Invention Record

2 8 12 10 Months After Months of Months Months Internal Disclosure Disclosure After Election

Alternate Reporting Timeline

Initial Disclosure Initial Patent Filing Internal Elect To Retain Title Foreign Filing Invention Record

6 8 12 10 Months After Months of Months Months Contractor Became Disclosure After Election Aware of Invention it need not be disclosed.3. Failure It may to nonetheless Disclose ■ Continuing Obligations be protectable as a trade secret. In addition to these disclosure and election There is aAs practical noted, if caveat a contractor to these disclo principles:ses but eitherrequirements, elects not to retain the title FAR or requires the governm contractorsent If the Government is the only market for the to file continuing reports. For example, the contractor’slater obtains subject title, invention—i.e., then the contractor there still is willno, retain“long a license form” to the clause, patent. FAR On 52.227-12, the other hand, requires if or is not likely to be any, commercial applica- (a) interim reports every 12 months from the tion—thenthe contractor a patent fails arguably to disclo hasse inlittle the fvalueirst ins totanc e –date and of if contractthe governm listingent acts the within subject 60 inventions days the contractor because the Government in all developed and stating that all subject inventions circumstancesafter learning will atof least the contractor’shave a generous failure license to disclose have – then been the disclosed, contractor (b)loses a afinalll righ report,ts in th ewithin to the subject invention. This Government license 3 months after completion of the contract is “a nonexclusive, nontransferable, irrevocable, work, listing all subject inventions and listing paid-up license to practice or have practiced for all subcontracts at any tier containing a pat- or on behalf of the United States the subject ent rights clause, and (c) periodic reports on invention throughout the world.”47 the utilization of a subject invention or efforts

11 © 2007 by Thomson/West ★ JUNE BRIEFING PAPERS 2007 ★ at obtaining utilization that are made by the policy, which serves Government interests and is contractor or its licensees or assignees.48 for the Government’s benefit.53 “Authorization and consent” means the Government has either As noted earlier, the contractor also has the expressly or impliedly consented to infringement obligation, if it elects title, thereafter to file of a patent.54 Implied authorization and consent patent applications and to pay for maintenance 49 can occur in various ways, including Contracting fees. In the event the contractor fails to do so, Officer direction, specifications or drawings that the Government may take title, although the necessitate infringement, or Government knowl- contractor—having made a proper initial disclo- edge of the infringement.55 sure—will still retain a broad license.50 Express authorization and consent is more common and is most often found when the Authorization & Consent Government incorporates the standard “Autho- rization and Consent” clause, FAR 52.227-1, into It makes sense as a matter of policy and practi- a company’s contract. This clause comes in two cality that, if a contractor is performing work for forms—a broad authorization and consent and the Government, there be limits on a third party’s a more narrow one. Broad authorization and ability to sue that contractor for infringement and consent is contained in Alternate I to the clause, thus potentially stop a Government program. A which is to be used in all research and develop- federal statute, 28 U.S.C.A. § 1498(a), is designed ment contracts. It states: to avoid this problem in certain circumstances. Under the statute, if a patented invention is used The Government authorizes and consents to all use and manufacture of any invention described “by or for the United States,” then (1) exclusive in and covered by a United States patent in the jurisdiction exists in the U.S. Court of Federal performance of this contract or any subcontract Claims for suit by a patent owner against the at any tier. United States, not against the contractor, with the The more limited authorization and consent of remedy being money damages but no injunctive FAR 52.227-1 is used otherwise56 and covers the relief; and (2) an alleged infringing contractor use of a U.S. patent:57 has an affirmative defense to a district court action by the patent holder. (1) embodied in the structure or composition of any article the delivery of which is accepted by the Government under this contract or The extent and nature of both the jurisdic- (2) used in machinery, tools, or methods whose tion and affirmative defenses under 28 U.S.C.A. use necessarily results from compliance by the § 1498(a) were the subject of a comprehensive Contractor or a subcontract with (i) specifications and thoughtful decision issued by the U.S. District or written provisions forming a part of this contract or (ii) specific written instructions given by Court for the Middle District of North Carolina the Contracting Officer…. in Madey v. Duke University.51 There, the university asserted § 1498(a) as an affirmative defense This more restricted authorization and consent against a lawsuit brought by a former employee for will be construed narrowly by the courts because, infringing two of his patents in work performed as a limited waiver of sovereign immunity, it should at a university laboratory operated under Govern- not be construed so as to “find consent and im- ment grants. As discussed in that decision, both pose potential liability on the Government where jurisdiction under 28 U.S.C.A. § 1498(a) and the terms of the [“Authorization and Consent”] 58 the affirmative defense depend upon proof that clause are not fully met.” This means that, as a the contractor’s (or grantee’s) use was “for” the matter of fact, the infringing party must prove United States, which under § 1498(a) is a two- as its affirmative defense not only that there was part test. That is, the invention has to be used authorization and consent but also that all of “for the Government and with the authorization the uses of the patented invention fall within or consent of the Government.”52 the scope of the Government’s consent, i.e., the requirements of the contract or research grant. “For the Government” means that the use is in In Madey, for example, the district court denied furtherance and fulfillment of a stated Government the university’s motion for summary judgment,

© 2007 by Thomson/West ★ JUNE BRIEFING PAPERS 2007 ★ holding that while the university was entitled to Patent Rights vs. Data Rights rely on 28 U.S.C.A. § 1498(a) as an affirmative Although the same development activity un- defense, a trial would be required to determine der a contract may give rise both to a subject whether Government agencies awarding research invention and to technical data or computer grants had authorized and consented to the use software in which the Government will obtain of patented inventions and whether all such use rights under the contract’s data rights clauses,62 was for the Government.59 those two forms of intellectual property rights are distinct from one another under the regula- Patent Indemnity tions. That is, the Government will obtain its patent rights according to the patent rights Notwithstanding authorization and consent, a clauses and its “data rights” license rights ac- contractor may ultimately be liable to indemnify cording to the separate data and software rights the Government for any damages found in a 28 clauses. The data rights clauses both under the U.S.C.A. § 1498(a) action. There is a specific FAR and the DFARS state:63 “Patent Indemnity” clause, FAR 52.227-3, that Nothing contained in this clause shall imply a provides for indemnification upon prompt no- license to the Government under any patent or be tification to the contractor of the infringement construed as affecting the scope of any license or action against the Government.60 Logically, the other right otherwise granted to the Government under any patent. FAR instructs that the “Patent Indemnity” clause is not to be used when there is broad authorization Therefore, while development may support both and consent granted or in contracts for supplies data rights and subject inventions, a contractor or services that are uniquely governmental—i.e., must be aware that there are different disclosure “clearly are not or have not been sold or offered and marking regimes64 under the patent rights for sale by any supplier to the public in the com- clauses and the data rights clauses. These require- mercial open market.”61 Prime contractors and ments must remain distinct from one another or subcontractors should scrutinize their “flowdown” else a contractor may risk losing either its right to provisions to ensure patent indemnity provisions patent title or license or its ability to assert limited are used appropriately and should reject them or restricted rights for items that were developed at when they are not. private expense prior to a Government contract.

GUIDELINES These Guidelines are intended to assist you in the patent. But even if you decline title, you will understanding how to recognize and address your still get a complete license to the patent. obligations and rights with respect to patents under 3. Ensure that your company has in place a Government contracts. They are not, however, a procedure requiring engineers and other person- substitute for professional representation in any nel engaged in development work to track and particular situation. to record on a standardized form the progress of 1. Remember that if your company conceives development regularly (monthly, for example) of or first reduces to practice an invention un- at the lowest component level. Tracking develop- der a Government procurement contract that ment this way will help assure that you will know includes the standard patent rights clauses, then when an item, component, process, or software you must disclose that invention to the Govern- has been “developed” for data rights purposes and ment promptly in accordance with the contract whether you may also have a reportable “subject requirements. invention.” 2. If you make this disclosure, then you may 4. Establish a position within the develop- elect to keep title to the patent or not, in your ment side of your business with responsibility discretion. If you elect to retain title, the Govern- for reviewing all developmental activity and be- ment will still get a very broad license to practice ing a liaison with intellectual property counsel.

This will help ensure that subject inventions on subject inventions as well as required reports are recognized so that they may be timely and on invention utilization. properly disclosed. 7. Consider establishing a group or commit- 5. Make certain that you have a process for tee responsible for deciding whether to elect to disclosing subject inventions to Contracting file patents on subject (or any) inventions or Officers under Government contracts, again whether instead to hold the development as a using a standardized form—either a DD Form trade secret. This decision invites an analysis of 882 for DOD contracts or a form patterned af- the potential commercial marketplace, the ease ter the 882 for other agencies. Typically, these of reverse engineering, and your company’s abil- procedures should involve coordination between ity to police and enforce patent rights. your company’s engineering, legal, and contracts departments. 8. Ensure that the contract and subcontract organizations are attuned to reviewing solicita- 6. Make sure that your process also encom- tions and “flowdown” terms and conditions for passes the regular reporting on subject inven- conformance to the FAR patent rights clauses, tions required by the FAR patent rights clauses, authorization and consent alternates, and patents including the interim and final contract reports indemnity provisions.

★ REFERENCES ★

1/ See generally DeVecchio, “Technical Data 9/ 35 U.S.C.A. § 202. & Computer Software After Night Vision: Marking, Delivery & Reverse Engineer- 10/ President’s Memorandum to the Heads of ing,” Briefing Papers No. 06-5 (Apr. 2006); the Executive Departments and Agen- Burgett, Sweeney & Kunzi, “Government cies, Government Patent Policy (Feb. 18, Rights in Data and Software/Edition II,” 1983); see also Exec. Order No. 12,591, Briefing Papers No. 95-11 (Oct. 1995). § 1(b)(4), 52 Fed. Reg. 13,414 (Apr. 10, 1987). 2/ See generally DeVecchio, “Copyright Pro- tection Under Government Contracts,” 11/ FAR 27.302. Briefing Papers No. 05-6 (May 2005). 12/ See 42 U.S.C.A. §§ 2182, 5908 (DOE); 3/ See, e.g., 35 U.S.C.A. § 101; FAR 27.302. 42 U.S.C.A. § 2451 (NASA).

4/ Microsoft Corp. v. AT&T Corp., 127 S. Ct. 13/ See 48 C.F.R. subpt. 927.3 (DOE); 48 C.F.R. 1746 (2007); KSR Int’l Co. v. Teleflex subpt. 1827.3 (NASA). Inc., 127 S. Ct. 1727 (2007). 14/ FAR 27.301. 5/ Zoltek Corp. v. United States, 442 F.3d 1345 (Fed. Cir. 2006); Madey v. Duke Univ., 413 15/ FAR 27.301 (emphasis added). F. Supp. 2d 601 (M.D.N.C. 2006); see also Stoughton, “Feature Comment: Zoltek v. 16/ See, e.g., Technitrol Inc. v. United States, U.S.—Divergent Judicial Views on Patent 440 F.2d 1362 (Ct. Cl. 1971). Suits Against the Government,” 48 GC ¶ 148 (Apr. 26, 2006); 48 GC ¶ 359. 17/ FAR 27.301 (emphasis added).

6/ Diamond v. Chakrabarty, 447 U.S. 303, 309 18/ FAR 27.301. (1980) (quoting Funk Bros. Seed Co. v. Kalo Inoculant Co., 333 U.S. 127, 130 19/ Technitrol, Inc. v. United States, 194 Ct. (1948)). Cl. 596, 609, 440 F.2d 1362, 1369 (Ct. Cl. 1971) (quoting 1 Walker Patents § 45). 7/ 35 U.S.C.A. § 154. 20/ The classic example is a horse collar. 8/ Patent & Trademark Amendments of 1980, Couch v. Barnett, 23 App. D.C. 446 Pub. L. No. 96-517, 94 Stat. 3015 (1980) (1904). (codified at 35 U.S.C.A. § 200 et seq.). See generally Svetz, “The Government’s 21/ Farrand Optical Co. v. United States, 325 F.2d Patent Policy: The Bayh-Dole Act & ‘Au- 328, 139 U.S.P.Q. 249 (2d Cir. 1963). thorization & Consent,’” Briefing Papers No. 02-8 (July 2002). 22/ Id.

23/ Scott v. Finney, 34 F.3d 1058, 1063 (Fed. 44/ E.g., FAR 52. 227-12, para. (d), (e). Cir. 1994). 45/ E.g., FAR 52.227-12, paras. (d)(2), (e); see 24/ Hyatt v. Boone, 146 F.3d 1348, 1352 (Fed. Campbell Plastics Eng’g & Mfg. Inc., Cir. 1998). ASBCA No. 53319, 03‑1 BCA ¶ 32,206, 45 GC ¶ 146; see also Nash & Cibinic, 25/ FAR 27.303(a). “Postscript: Forfeiture of Title to Patent,” 19 Nash & Cibinic Rep. ¶ 2 (Jan. 2005); 26/ FAR 27.303(b). Nash, “Forfeiture of Title to Patent: A Clear Abuse of Discretion,” 17 Nash & 27/ FAR 27.303(c). Cibinic Rep. ¶ 25 (May 2003).

28/ E.g., FAR 52.227-12, para. (g). 46/ FAR 27.301.

29/ Compare FAR 52.227-12, para. (g) (patents), 47/ E.g., FAR 52.227-12, para. (b). with DFARS 252.227-7013, para. (k) (technical data). 48/ FAR 52.227-12, paras. (f)(7), (f)(8), (h).

30/ E.g., FAR 52.227-12, paras. (b), (c). 49/ E.g., FAR 52.227-12, para. (d).

31/ E.g., FAR 52.227-12, paras. (d), (e). 50/ E.g., FAR 52.227-12, paras. (d), (e); see FAR 52.227-12, para. (j) (regarding “march-in 32/ FAR 52.2227-12, para. (c)(1) (emphasis rights”). added); see also FAR 52.227-11, para. (c)(1). 51/ Madey v. Duke Univ., 413 F. Supp. 2d 601 (M.D.N.C. 2006) see also Nash, 33/ See Campbell Plastics Eng’g & Mfg. Inc., “Authorization and Consent: Its Role in ASBCA No. 53319, 03‑1 BCA ¶ 32,206, Private Litigation,” 20 Nash & Cibinic Rep. 45 GC ¶ 146; see also Burgett, “Feature ¶ 31 (July 2006). Comment: Federal Circuit Upholds Patent Forfeiture for Failure To Comply Strictly 52/ 28 U.S.C.A. § 1498(a) (emphasis added). With Reporting Requirement, Despite Lack of Prejudice,” 46 GC ¶ 457 (Nov. 24, 2004); Burgett, “Feature Comment: 53/ 413 F. Supp. 2d at 607. ASBCA Issues Wake-Up Call About the Dire Consequences of Failing To Report 54/ Id. Subject Inventions,” 45 GC ¶ 149 (Apr. 9, 2003). 55/ Id. at 609.

34/ FAR 52.227-12, para. (c)(1); see also FAR 56/ See FAR 27.201-2. 52.227-11, para. (c)(1). 57/ FAR 52.227-1, para. (a). 35/ FAR 52.227-12, para. (c)(1); see also FAR 52.227-11, para. (c)(1). 58/ 413 F. Supp. 2d at 609.

36/ DFARS 253.303-882. 59/ Id. (also holding that the university was not entitled to assert a defense that it was 37/ See FAR 52.227-11, para. (f)(2), 52.227-12, using the patented inventions under the para. (f)(2), (5). license granted to the Government by the Bayh-Dole Act because such “Govern- 38/ See, e.g., DFARS 252.227-7014, para. (a)(7); ment license defense” belongs to the 227.7203-4(b); DeVecchio, “Licensing Government, not a private third party). Computer Software,” Briefing Papers No. 04-3, at 7 (Feb. 2004). 60/ FAR 52.227-3, para. (b).

39/ FAR 52.227-12, para. (c)(2); see also FAR 61/ FAR 27.203-1(b). 52.227-11, para. (c)(2) (within two years of disclosure). 62/ FAR 52.227-14; DFARS 252.227-7013, -7014. 40/ FAR 52. 227-12, para. (e)(1); see also FAR 52.227-11, para. (e)(1). 63/ FAR 52.227-14, para. (i); DFARS 252.227- 7013, para. (i), -7014, para. (i). 41/ FAR 52. 227-12, para. (e)(1); see also FAR 52.227-11, para. (e)(1). 64/ See generally DeVecchio, “Technical Data & Computer Software After Night Vision: 42/ FAR 52.227-12, paras. (c)(3), (d)(3); see also Marking, Delivery & Reverse Engineer- FAR 52.227-11, paras. (c)(3), (d)(2). ing,” Briefing Papers No. 06-5 (Apr. 2006); Burgett, Sweeney & Kunzi, “Government 43/ FAR 52.227-12, para. (d)(4); see also FAR Rights in Data and Software/Edition II,” 52.227-11, para. (d)(3). Briefing Papers No. 95-11 (Oct. 1995).