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DoD Contractor Patents Presented by Allan Y. Lee, Patent Counsel SSC Charleston Legal Office 13 February 2008 Charlest

02/13/2008. CDCA meeting. 2. Overview. Definition and importance of PatentsDefense Contractor Rights/ResponsibilitiesRed Flags for Defense ContractorsQuestions. 02/13/2008. CDCA meeting. 3. Definition and Importance of Patents. . . 02/13/2008. CDCA meeting. 4. What is a Patent?. Right to exclude others from making, using or selling his/her invention in exchange for disclosing it to the public (limited monopoly)Patent term is generally 20 years from the date of filing for a patentPatent holder is responsible for policing his/her patent.

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DoD Contractor Patents Presented by Allan Y. Lee, Patent Counsel SSC Charleston Legal Office 13 February 2008 Charlest

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    1. DoD Contractor Patents Presented by Allan Y. Lee, Patent Counsel SSC Charleston Legal Office 13 February 2008 Charleston Defense Contractors Association Meeting

    2. 02/13/2008 CDCA meeting 2 Overview Definition and importance of Patents Defense Contractor Rights/Responsibilities Red Flags for Defense Contractors Questions

    3. 02/13/2008 CDCA meeting 3 Definition and Importance of Patents

    4. 02/13/2008 CDCA meeting 4 What is a Patent? Right to exclude others from making, using or selling his/her invention in exchange for disclosing it to the public (limited monopoly) Patent term is generally 20 years from the date of filing for a patent Patent holder is responsible for policing his/her patent

    5. 02/13/2008 CDCA meeting 5 Why are Patents Important? Protects Contractors’ investment in R&D Protects Contractors against patent infringement lawsuits Basis for Breach of Contract; or Withholding of % of contract dollar amount

    6. 02/13/2008 CDCA meeting 6 What’s in it for Contractors? New Revenue Streams Licensing Royalties Commercialization into new product lines Industry Recognition

    7. 02/13/2008 CDCA meeting 7 Who must report inventions? ALL U.S. Government employees DoD Contractors Must report inventions developed under a contract (Form DD882)

    8. 02/13/2008 CDCA meeting 8 Contractors Rights/Responsibilities

    9. 02/13/2008 CDCA meeting 9 Rights & Responsibilities Bayh-Dole Act (1980) – “Patent Rights in Inventions Made with Federal Assistance” Codified in FAR and DFARS provisions Spirit of the B-D Act – Fairly distribute patent rights between Contractors and Federal Government

    10. 02/13/2008 CDCA meeting 10 Rights & Responsibilities FAR Provisions FAR 27.303 – Policy/Prescription clause FAR 52.227-11 “Patent Rights – Ownership by the Contractor” FAR 52.227-12 – recently deleted (final rule published at 72 FR 63045 on November 7, 2007) FAR 52.227-13 “Patent Rights – Ownership by the Government” DFARS Provisions DFARS 227.303 – Policy/Prescription clause DFARS 252.227-7038 – “Patent Rights – Ownership by the Contractor (Large Business)” recently replaced FAR 52.227-12 (December 7, 2007)

    11. 02/13/2008 CDCA meeting 11 Rights depend on: Contract Clauses If the patent rights clauses are NOT included in the contract, then Government and Contractor can have separate or joint ownership of the invention depending on inventorship If the patent rights clauses are included in the contract, then FAR & DFARS controls

    12. 02/13/2008 CDCA meeting 12 FAR/DFARS-Contractor Must Establish and maintain effective procedures to ensure inventions are promptly identified Disclose invention in writing to contracting officer Generally, within two months after inventor discloses invention to contractor Elect whether Contractor wants to retain ownership of the invention (DD882)

    13. 02/13/2008 CDCA meeting 13 Contractor Elects Ownership Contractor MUST file a patent application Government obtains a nonexclusive, nontransferable, irrevocable, paid-up license to practice the invention

    14. 02/13/2008 CDCA meeting 14 Contractor Elects NOT to retain Ownership Government MAY file a patent application Contractor obtains a nonexclusive, royalty-free license to practice the invention

    15. 02/13/2008 CDCA meeting 15 Red Flags

    16. 02/13/2008 CDCA meeting 16 Red Flags Actions by inventors that have legal effect on an invention Publication Non-Experimental Use Sale or Offer for Sale

    17. 02/13/2008 CDCA meeting 17 Red Flags Patent application must be filed with USPTO no later than ONE YEAR after the invention is: Described in a publication (worldwide); or Actually used (other than experimentally) (U.S. and U.S. territories only); or Has been sold or offered for sale (U.S. and U.S. territories only).

    18. 02/13/2008 CDCA meeting 18 Red Flags Unauthorized use of: SPAWAR name and/or logo Trademark and Ethics issues Photographs of facilities and/or personnel Privacy, Physical Security and OPSEC issues SPAWAR/DoD information Physical Security and OPSEC issues

    19. 02/13/2008 CDCA meeting 19 Conclusion

    20. 02/13/2008 CDCA meeting 20 How to Contact Us Space and Naval Warfare Systems Center Charleston PO BOX 190022, Code 36000 (formerly OC) Charleston, SC 29419-2155 Tel: 843-218-5569 DSN: 588-5569 Fax: 843-218-5486

    21. 02/13/2008 CDCA meeting 21 The Patent Staff Allan Lee – Patent Counsel (843-218-5569) allan.lee@navy.mil Bldg. 3147, second floor, cube 2-309 Beth (Neva) Fiddie – Paralegal (843-218-4062) neva.fiddie@navy.mil Bldg. 3147, second floor, cube 2-314

    22. 02/13/2008 CDCA meeting 22 Resources Visit www.uspto.gov for general patent information and to search existing patents Visit www.google.com to search existing patents Visit www.patentfetcher.com to download pdfs of existing patents

    23. 02/13/2008 CDCA meeting 23 Acronyms B-D Act – Bayh-Dole Act DFARS – Defense Federal Acquisition Regulation Supplement DoD – Department of Defense FAR – Federal Acquisition Regulation R&D – Research and Development

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