Intellectual Property: Navigating through Commercial Waters

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Intellectual Property: Intellectual Property: Navigating through Commercial Navigating through Commercial Waters Waters ABA Seminar on R&D Commercial Practices and Government Contracts 22 April 2002

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Intellectual Property: Navigating through Commercial Waters. ABA Seminar on R&D Commercial Practices and Government Contracts 22 April 2002. Government Concern. Basic Government/Industry Cultural Value Conflict. - PowerPoint PPT Presentation

Transcript of Intellectual Property: Navigating through Commercial Waters

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Intellectual Property:Intellectual Property: Navigating through Commercial Navigating through Commercial

WatersWaters

ABA Seminar on R&D Commercial Practices and Government Contracts

22 April 2002

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Government ConcernGovernment Concern

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Basic Government/IndustryBasic Government/IndustryCultural Value ConflictCultural Value Conflict

Industry wants to protect its most valuable Industry wants to protect its most valuable commodity—IP, from unauthorized commodity—IP, from unauthorized disclosure disclosure

vs.vs. Government traditionally seeksGovernment traditionally seeks

– delivery for everything it has paid for, whether delivery for everything it has paid for, whether needed or not needed or not

– unlimited patent or data rights to enhance unlimited patent or data rights to enhance future competitionfuture competition

A cultural and policy change is required

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Industry IP ConcernsIndustry IP Concerns

Government requires too much data Government requires too much data and demands excessive rightsand demands excessive rights

Government doesn’t properly protect Government doesn’t properly protect industry’s data from competitorsindustry’s data from competitors

Regulations are too complex, difficult Regulations are too complex, difficult to understand, and do not reflect to understand, and do not reflect business realitiesbusiness realities– Trade secret protection issueTrade secret protection issue

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Industry IP ConcernsIndustry IP Concerns (Continued)(Continued)

Regulations do not ensure Regulations do not ensure subcontractor rights are protected subcontractor rights are protected

Acquisition community doesn’t feel Acquisition community doesn’t feel empowered to move from historical empowered to move from historical paradigmparadigm– Training issueTraining issue

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Industry IP ConcernsIndustry IP Concerns (Continued)(Continued)

Contracting officers typically don’t Contracting officers typically don’t understand or take advantage of understand or take advantage of existing inherent IP flexibility in existing inherent IP flexibility in regulationsregulations– Addressed in part by IP guideAddressed in part by IP guide

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Policy LettersPolicy Letters

Sep 5, 2000 USD(AT&L) letterSep 5, 2000 USD(AT&L) letter– Announced new IP thrust to attract Announced new IP thrust to attract

commercial firmscommercial firms

– Charged DUSD(AR) to develop guideCharged DUSD(AR) to develop guide Government/industry team Government/industry team

recommended process, regulatory recommended process, regulatory and legislative initiativesand legislative initiatives

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Policy Letters Policy Letters (Continued)(Continued)

Jan 5, 2001 USD(AT&L) letter Jan 5, 2001 USD(AT&L) letter – Pursue DFARS, Part 227 revisionsPursue DFARS, Part 227 revisions– Pursue possible patent clause deviationsPursue possible patent clause deviations

New emphasisNew emphasis– Use specifically negotiated license rightsUse specifically negotiated license rights

• special licensesspecial licenses– Exercise flexibility when negotiating patent rightsExercise flexibility when negotiating patent rights– Use performance-based acquisition strategies to Use performance-based acquisition strategies to

obviate need for data/rightsobviate need for data/rights– Acquire only data/rights truly neededAcquire only data/rights truly needed

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Policy Letters Policy Letters (Continued)(Continued)

Dec 21, 2001 USD(AT&L) letter Dec 21, 2001 USD(AT&L) letter – Distributed Version 1.1 of the Guide and Distributed Version 1.1 of the Guide and

promoted is wide disseminationpromoted is wide dissemination– Reinforced Reinforced

• value of intellectual property to commercial firmsvalue of intellectual property to commercial firms• Need for cultural change to embedded obsolete Need for cultural change to embedded obsolete

thinkingthinking– Change current practices and actively promote Change current practices and actively promote

creative thinking within the framework of current creative thinking within the framework of current regulationsregulations

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Ch. 1 – Ch. 1 – The PrinciplesThe Principles Ch. 2 – Intellectual Property FrameworkCh. 2 – Intellectual Property Framework Ch. 3 – Acquisition PlanningCh. 3 – Acquisition Planning Ch. 4 – Ch. 4 – Issues and SolutionsIssues and Solutions Appendices –Appendices –

– Policy letters, supplement materials, Policy letters, supplement materials, FAR/DFARS clause summaries, history, FAR/DFARS clause summaries, history, references, and resourcesreferences, and resources

Guide Organization

Intellectual Property:Intellectual Property:Navigating through Commercial WatersNavigating through Commercial Waters

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IP Guide IP Guide PrinciplesPrinciples

1. 1. Integrate IP considerations Integrate IP considerations fully into acquisition strategies fully into acquisition strategies for advanced technologies.for advanced technologies.

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IP Guide IP Guide Principles Principles (Continued)(Continued)

2.2.Respect and protect privately Respect and protect privately developed IP because it is a developed IP because it is a valuable form of intangible valuable form of intangible property that is critical to the property that is critical to the financial strength of a financial strength of a business.business.

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IP Guide IP Guide Principles Principles (Continued)(Continued)

3.3.Resolve issues prior to award Resolve issues prior to award by clearly identifying and by clearly identifying and distinguishing the IP distinguishing the IP deliverables from the license deliverables from the license rights in those deliverables.rights in those deliverables.

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IP Guide Principles IP Guide Principles (Continued)(Continued)

4. Negotiate specialized IP 4. Negotiate specialized IP provisions whenever the provisions whenever the customary deliverables or customary deliverables or standard license rights do not standard license rights do not adequately balance the adequately balance the interests of the contractor and interests of the contractor and the Government.the Government.

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IP Guide Principles IP Guide Principles (Continued)(Continued)

5. Seek flexible and creative 5. Seek flexible and creative solutions to IP issues, solutions to IP issues, focusing on acquiring only focusing on acquiring only those deliverables and license those deliverables and license rights necessary to rights necessary to accomplish the acquisition accomplish the acquisition strategy.strategy.

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Appropriate use of the patents Appropriate use of the patents clauseclause

Patent rights clausePatent rights clause Technical data rightsTechnical data rights Computer software rightsComputer software rights Other clause issuesOther clause issues

Issues Covered by the GuideIssues Covered by the Guide

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IP Guide SummaryIP Guide Summary

Acquisition and legal communities Acquisition and legal communities need to embrace the IP principles and need to embrace the IP principles and guide philosophyguide philosophy

Use inherent flexibility in regulationsUse inherent flexibility in regulations

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IP Guide Summary IP Guide Summary (Continued)(Continued)

Entire acquisition team must be engaged to Entire acquisition team must be engaged to ensure commercial industry involvement, ensure commercial industry involvement, while ensuring government needs are metwhile ensuring government needs are met

Free IP negotiations from focusing on how Free IP negotiations from focusing on how much money each party contributes, to much money each party contributes, to looking at entire deallooking at entire deal

Your comments on the guide will help set the foundation for these imperatives!

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Next Steps - First Do No Next Steps - First Do No Harm!Harm!

IP working group developing IP working group developing campaign strategycampaign strategy–Outreach & CommunicationOutreach & Communication

• Speeches, articles, press lettersSpeeches, articles, press letters• NCMA World Congress 2002 panelNCMA World Congress 2002 panel

–TrainingTraining• On line/CD ROM training plannedOn line/CD ROM training planned• Commenced script writing - awaiting Commenced script writing - awaiting

funding for video developmentfunding for video development

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Next Steps - First Do No Harm!Next Steps - First Do No Harm!(Continued)(Continued)

Legislative initiatives gaining Legislative initiatives gaining momentummomentum– Bayh Dole possibilities Bayh Dole possibilities

• permit contracting officers flexibility in permit contracting officers flexibility in negotiating certain government rightsnegotiating certain government rights

• permits trade secretspermits trade secrets• relaxed subject invention definition relaxed subject invention definition

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Next Steps - First Do No Harm!Next Steps - First Do No Harm!(Continued)(Continued)

Regulatory initiativesRegulatory initiatives– FAR plain language rewrite ofFAR plain language rewrite of

Part 27Part 27

– DFARS case on the treatment of DFARS case on the treatment of proprietary informationproprietary information

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Acquisition Initiatives WebsiteAcquisition Initiatives Website

Acquisition InitiativesAcquisition Initiatives

http://www.acq.osd.mil/ar/http://www.acq.osd.mil/ar/

Resources – IP Guide Resources – IP Guide http://.www.acq.osd.mil/ar/#intelprophttp://.www.acq.osd.mil/ar/#intelprop

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Points of ContactPoints of Contact

Lt Col Gregory Redick, Lt Col Gregory Redick, OSD(AT&L)AIOSD(AT&L)AI

– 703/693-7795703/693-7795– [email protected]@osd.mil– http://www.acq.osd.mil/ar/http://www.acq.osd.mil/ar/

Karen Sorber, LMIKaren Sorber, LMI

– 703/917-7219703/917-7219– [email protected]@lmi.org

John Ablard, LMIJohn Ablard, LMI

– 703/917-7243703/917-7243– [email protected]@lmi.org