Primer on Patentability and Use of Ideas Developed by Contractors Performing Work for State and Federal Transportation and Local Planning Agencies (2017) / Chapter Skim
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Pages 24-36
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From page 24... ...
24 Today, however, state statutes, policies, and employment agreements often modify the general rule that the individual inventor has the exclusive right to patent an invention. The modern trend is for state statutes, policies, and employment agreements to provide that the state retains title to inventions made by state transportation agency employees in the course of employment, but the employee is entitled to share in any of the profits or revenues derived from the patent.210 V
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25 regarding damages claims for patent infringement.217 However, a number of these decisions suggest that a patent owner can sue a state transportation agency in federal court for injunctive relief (to prevent the infringement of a patent) ,218 or the patent owner can pursue a takings claim (or similar remedy)
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From page 26... ...
26 The Hercules and Jacobs Wind decisions are contradictory, and leave largely unanswered the question of a patent owner's remedy (and a state transportation agency's liability) for patent infringement by a state transportation agency.
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27 they actually infringe the patent by adhering to project specifications that closely track the patent.242 B Defenses to Infringement in the Performance of State and Local Contracts Although state transportation agencies are immune from suit for patent infringement, their contractors are not.243 As seen in the State Contracting and Engineering Corp.
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From page 28... ...
28 sealant melters to state transportation agencies. Crafco argued that its patent was not barred by prior sales or public use, because the patented device included a powered conveyor belt whereas the devices used previously by TxDOT and PennDOT included only manual conveyor belts.
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29 brochure published by Fox more than 1 year before the patent application.264 The U.S. District Court for the District of Maryland rejected Fox's claim that the MDOT test was a purely "experimental use" of the system, in light of other contemporaneous sales of the system.265 The court concluded,266 and the Federal Circuit affirmed,267 that the Fox patent was invalid in light of the MDOT tests as well as Fox's inequitable conduct in failing to disclose the MDOT tests or the brochure to the USPTO examiner.
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30 made with federal funding, it is likely that the federal government has obtained a license, pursuant to the Bayh–Dole Act, to have the invention used on its behalf. However, as seen in the Trinity and Manville cases, courts have generally declined to consider arguments that state transportation agencies can take advantage of the federal license even when their contractors are performing work funded in part with federal grant funds.
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31 change in venue to a federal court in the infringer's home state is proper.291 VI. CONCLUSIONS Patent law as it relates to government contracts is well defined on direct federal contracts, and both parties (the federal agency and its contractor)
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32 to being invalidated as obvious or not novel. The vast amount of work performed by state transportation agencies creates a huge store of prior art that can be used to challenge the patentability of an invention, if similar technology was previously used by others in the industry.
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ACKNOWLEDGMENTS This study was performed under the overall guidance of the NCHRP Project Committee SP 20-6. The Committee is chaired by MICHAEL E
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These digests are issued in order to increase awareness of research results emanating from projects in the Cooperative Research Programs (CRP)
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