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PATENTS

  1. What is a patent and what are patent rights? [Answer]
  2. Are Government agencies prohibited from owning patents? [Answer]
  3. How do patent rights come up in government acquisitions and what are the appropriate FAR/DFARS clauses to include? [Answer]
  4. What rights does the Government acquire in contracts that include these clauses? [Answer]
  5. Does DISA have a policy addressing the ownership and creation of patents by its employees? [Answer]

 

What is a patent and what are patent rights?

A patent is the grant of a property right in an invention issued by the United States Patent and Trademark Office (USPTO).  The right conferred by the patent grant is the right to exclude others from making, using, offering for sale, or selling “the invention” in the United States or "importing" the invention into the United States during the term of the patent.

Are Government agencies prohibited from owning patents?

No, unlike U.S. Copyright law, there is no statutory prohibition against federal agencies from holding patents.   

How do patent rights come up in government acquisitions and what are the appropriate FAR/DFARS clauses to include? 

Patent rights clauses are usually added in the contract if the project involves “experimental, developmental, or research work. Depending on the circumstances, it may be appropriate to include one or more of the following clauses:

FAR 52.227-11  Patent Rights – Ownership by the Contractor

FAR 52.227-13  Patent Rights – Ownership by the Government

DFARS 252.227-7038 Patent Rights – Ownership by the Contractor (Large Business)

DFARS 252.227-7039 Patents – Reporting of Subject Inventions

What rights does the Government acquire in contracts that include these clauses?

Generally, patent rights grant the Government license rights to the invention if either conceived or first actually reduced to practice during contract performance.  The Government acquires a nonexclusive, nontransferable, irrevocable, paid-up license to practice the invention during the term of the patent. In addition, if the contractor creates an invention during the contract period, it must disclose the invention in writing to the agency.  

Does DISA have a policy addressing the ownership and creation of patents by its employees?

Yes, DISA Instruction 100-205-1, “Research and Development, Ownership of an Invention Made by a DISA Employee.” This instruction provides DISA with the discretion to acquire ownership of any invention made by an employee either (1) during work hours; (2) with a contribution by the Government of facilities, equipment, materials, funds, or information or of time or services of other employees on official duty; or (3) that bears a direct relation to or is made in consequence of the official duties of the inventor.

If DISA determines that the contribution, based upon these criteria, is insufficient to require assignment of the invention to DISA or that DISA has no interest in the invention, title may remain in the employee.