IP Rights in Government Contracts

Working with the U.S. Government can be a formidable challenge. Intellectual property rights in government procurement and sponsored research and development contracts are subject to different frameworks than those prevalent in the private sector. Navigating such frameworks requires IP counsel with knowledge of both IP protection regimes, as well as the ways government contracting and private sector IP protection strategies affect each other.

Defense Industry Experience

We don't just know the regulations; we've lived them. Our team includes former senior engineers from major defense contractors like Lockheed Martin and L3 Communications, where they managed projects involving encrypted data links and government deliverables. We understand:

• The Engineer's Perspective: How to document "subject inventions" without disrupting the development workflow.
• The Program Manager's Perspective: Balancing deliverable requirements with long-term IP retention.
• The Reality of "Mixed Funding": Navigating the gray areas where private IR&D dollars mix with government contract funds.

Key Considerations

Data Rights: The government may have rights to technical data or software developed with federal funds, which could limit the contractor's ability to commercialize these products. Small Business Innovation Research (SBIR) and Small Business Technology Transfer (STTR) programs involve a special subset of Data Rights protection.

Patent Rights: The government may obtain rights to patents developed during or delivered under a government-funded project, but contractors often retain ownership with specific usage restrictions.

Government Use Rights: The government may have "march-in" rights, allowing it to use or authorize others to use the IP if certain conditions are met, such as when a contractor fails to commercialize the technology.

The Bayh-Dole Act: Bayh-Dole allows contractors to retain ownership of inventions developed with federal funding, which is a key advantage for many companies working on government projects. The Act also encourages contractors to commercialize their innovations, making it easier to license or sell IP developed under government contracts. However, in exchange for these benefits, the government has certain usage rights, such as a license to use the technology for governmental purposes.