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From page 8... ... 8A. Contractor Rights to Inventions Made on Federal Contracts As noted in Section I.B.3, on any federal contract that involves the performance of experimental, developmental, or research work, the contractor in privity with the federal agency (which may be an individual, a commercial firm, or a nonprofit organization) Read the entire page →
From page 9... ... 9retain title,63 as there is typically no other realistic way for the contractor to exercise ownership of the invention. The patent application filed with the USPTO must include "a statement specifying that the invention was made with Government support and that the Government has certain rights in the invention."64 The contractor may also be required by the funding agency to periodically report on its subsequent efforts to commercialize the invention.65 The federal contractor's failure to take any of the prescribed steps previously highlighted may result in the contractor's loss of patent rights to the federal government,66 as discussed in greater detail in Section II.B infra. Read the entire page →
From page 10... ... 10 agency.75 Likewise, if the contractor ultimately applies for patent protection, the funding agency could argue that the preexisting proprietary technology identified by the contractor was not yet a fully formed invention, and that the invention was actually first reduced to practice in the performance of the federal contract, allowing the government to take a paid-up license to practice the invention. The delivery of proprietary data with "limited rights" or "restricted rights" does not necessarily reduce the scope of the government's license to practice the patented invention.76 However, a patent application filed prior to the contractor beginning performance of the federal contract work would typically demonstrate that the invention was not first reduced to practice in the performance of the federal contract,77 so that the federal government would not automatically obtain a paid-up license in the invention. Read the entire page →
From page 11... ... 11 Act.86 Even when the contractor obtains a patent for a federally funded invention, the funding agency may exercise what are known as "march in rights,"87 where the government can effectively reclaim ownership of the patented technology that it funded or require the patent owner to grant a license to another firm or organization. To exercise its march in rights, the federal agency must first make a written determination that the "action is necessary" in order to satisfy the commercialization goals of the Bayh–Dole Act (e.g., when the federal government determines that the patent owner is not taking "effective steps to achieve practical application" of the invention "within a reasonable time") Read the entire page →
From page 12... ... 12 laboratories housed at Turner–Fairbank Highway Research Center. Further, FHWA itself is specifically authorized to enter into CRADAs with the Transportation Research Board (TRB) Read the entire page →
From page 13... ... 13 agencies are not generally prohibited from contracting for the use of patented or proprietary technology, and "will not refuse to award a contract on the grounds that the prospective contractor may infringe a patent."114 However, federal agencies may be cautious of contracting for the use of patented or proprietary technology for a number of reasons (including concerns about paying a premium to the rights holder or concerns about government programs becoming dependent on proprietary technology to the extent that the rights holder establishes an effective monopoly position as the only realistic service provider for future contracts) Read the entire page →

From page 8...

... 8A. Contractor Rights to Inventions Made on Federal Contracts As noted in Section I.B.3, on any federal contract that involves the performance of experimental, developmental, or research work, the contractor in privity with the federal agency (which may be an individual, a commercial firm, or a nonprofit organization)

Read the entire page →

From page 9...

... 9retain title,63 as there is typically no other realistic way for the contractor to exercise ownership of the invention. The patent application filed with the USPTO must include "a statement specifying that the invention was made with Government support and that the Government has certain rights in the invention."64 The contractor may also be required by the funding agency to periodically report on its subsequent efforts to commercialize the invention.65 The federal contractor's failure to take any of the prescribed steps previously highlighted may result in the contractor's loss of patent rights to the federal government,66 as discussed in greater detail in Section II.B infra.

Read the entire page →

From page 10...

... 10 agency.75 Likewise, if the contractor ultimately applies for patent protection, the funding agency could argue that the preexisting proprietary technology identified by the contractor was not yet a fully formed invention, and that the invention was actually first reduced to practice in the performance of the federal contract, allowing the government to take a paid-up license to practice the invention. The delivery of proprietary data with "limited rights" or "restricted rights" does not necessarily reduce the scope of the government's license to practice the patented invention.76 However, a patent application filed prior to the contractor beginning performance of the federal contract work would typically demonstrate that the invention was not first reduced to practice in the performance of the federal contract,77 so that the federal government would not automatically obtain a paid-up license in the invention.

Read the entire page →

From page 11...

... 11 Act.86 Even when the contractor obtains a patent for a federally funded invention, the funding agency may exercise what are known as "march in rights,"87 where the government can effectively reclaim ownership of the patented technology that it funded or require the patent owner to grant a license to another firm or organization. To exercise its march in rights, the federal agency must first make a written determination that the "action is necessary" in order to satisfy the commercialization goals of the Bayh–Dole Act (e.g., when the federal government determines that the patent owner is not taking "effective steps to achieve practical application" of the invention "within a reasonable time")

Read the entire page →

From page 12...

... 12 laboratories housed at Turner–Fairbank Highway Research Center. Further, FHWA itself is specifically authorized to enter into CRADAs with the Transportation Research Board (TRB)

Read the entire page →

From page 13...

... 13 agencies are not generally prohibited from contracting for the use of patented or proprietary technology, and "will not refuse to award a contract on the grounds that the prospective contractor may infringe a patent."114 However, federal agencies may be cautious of contracting for the use of patented or proprietary technology for a number of reasons (including concerns about paying a premium to the rights holder or concerns about government programs becoming dependent on proprietary technology to the extent that the rights holder establishes an effective monopoly position as the only realistic service provider for future contracts)

Read the entire page →

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