Print PDF Patent and Data Rights Under Public Contracts

Companies, universities, nonprofit entities, and individuals who contract to perform work in research and development projects funded in whole or in part with federal, state, or local government funding must be especially vigilant in protecting their investment in proprietary intellectual property. 

The methods, processes, and techniques developed by contractors – often called trade secrets or “know-how” – normally are not disclosed to competitors or customers.  However, if a contractor has to use proprietary information, software, designs, and products to complete its designated work on a government project, it may inadvertently release or cause others to release such proprietary information unless the contractor takes the appropriate precautions.  Without such precautions, the contractor may give unintended rights to the government, above and beyond the minimum rights to which the government might otherwise be entitled. 

We help clients to protect the confidential nature of proprietary information in the context of government-funded projects.  Our attorneys are familiar with the many complexities associated with creating, using, and delivering technical data and computer software to government agencies.  We assist clients with advanced planning strategies and with the establishment of critical controls for creation and preservation of the records needed to demonstrate proprietary rights in data, with the development of "subject inventions," and with compliance with regulations governing the ownership of patent rights in subject inventions.  Our lawyers routinely advise clients on the statutes and regulations that create and govern the ownership of, and the rights to use, data and information first developed during performance of a procurement contract, cooperative agreement, cooperative research and development agreement (CRADA), and other sorts of agreements.  We negotiate agreements for the licensing of rights in pre-existing trade secrets and know-how as supporting documents and as critical elements of the government contract.  Our attorneys also represent clients in administrative and legal proceedings involving disputes arising out of the assertion of limited or restricted rights in technical data, including product designs, drawings and diagrams, test data and methodologies, manufacturing processes, and computer software.