- What are data rights? [Answer]
- If the Government acquires a data rights license, who owns the copyright in technical data and computer software? [Answer]
- What license rights does the Government obtain in technical data and computer software developed under a government contract? [Answer]
- What is the scope of these licensing rights? [Answer]
- What are some of the relevant DFARS provisions governing data rights? [Answer]
- What are the relevant data rights clauses to include in solicitations and government contracts to ensure that the agency obtains the appropriate licensing rights? [Answer]
- Is it possible for the Government and the contractor to modify the standard licensing rights granted to the Government? [Answer]
- Are there broad principles to consider when acquiring licensing rights? [Answer]
- Are there steps that program managers and contracting officers should take when drafting and negotiating contracts to identify and resolve data and data rights issues prior to contract award? [Answer]
- Does the receipt of confidential and proprietary information present problems for program managers and contracting officers during the acquisition process? [Answer]
1. What are data rights?
“Data rights” refer to the Government’s nonexclusive license rights in two categories of valuable intellectual property, “technical data” and “computer software” delivered by contractors under civilian agency and DoD contracts. The Federal Acquisition Regulations (FAR) prescribe policies, procedures and clauses pertaining to data rights for civilian agencies and the Defense Federal Acquisition Regulations (DFARS) for DoD.
“Technical data (TD)” includes any recorded information of a scientific or technical nature (e.g., product design or maintenance data, computer databases, and computer software documentation). “Computer software” includes executable code, source code, code listings, design details, processes, flow charts, and related material that would enable the software to be reproduced, recreated or recompiled, but excludes computer databases or computer software documentation.
2. If the Government acquires a data rights license, who owns the copyright in technical data and computer software?
Contractors generally retain copyright ownership of the noncommercial technical data and noncommercial computer software that they develop and deliver under DoD contracts, although they may agree under terms negotiated by the parties to assign the copyright to the Government.
3. What license rights does the Government obtain in technical data and computer software developed under a government contract?
The scope of the agency’s licensing rights generally depends upon the source of the funding (i.e., government, mixed or private), the nature of the data (commercial or noncommercial) and any negotiated terms of the contract.
If the Government exclusively funds the project, the agency generally obtains an “unlimited rights” license in noncommercial technical data, noncommercial computer software and noncommercial computer software documentation. The Government automatically acquires “unlimited rights” in certain categories of technical data including: (1) data pertaining to an item, component, or process (ICP) developed exclusively with Government funds; (2) form, fit, and function data; and (3) corrections or changes to technical data furnished to the Contractor by the Government.
If the Government and the contractor both fund the project, and the contractor delivers proprietary technical data or computer software, the agency may acquire a “Government purpose rights” license.
If the project is exclusively funded by the contractor, the agency usually acquires a “restricted rights” license in noncommercial computer software and a “limited rights” license in noncommercial technical data.
All deliverables should be examined prior to acceptance to determine whether they include any restrictive markings limiting the Government’s licensing rights under the DFARS.
4. What is the scope of these licensing rights?
An “unlimited rights” license means that the Government can use, modify, reproduce, release or disclose technical data or computer software in whole or in part, in any manner, and for any purpose whatsoever, and to have or authorize others to do so.
A “Government Purpose rights” license means the rights to use, modify, reproduce, release or disclose the technical data or computer software within the Government without restriction and outside the Government for a Government purpose – “any activity in which the United States Government is a party, including cooperative agreements with international or multi-national defense organizations or sales or transfers by the United States Government to foreign governments or international organizations. Government purposes include competitive procurement, but do not include use for commercial purposes.”
A Government purpose license remains in effect for 5 years unless the parties negotiate a different period. Upon expiration of the five-year term or other negotiated period, the Government shall have an “unlimited rights” license in the noncommercial technical data or noncommercial computer software.
“Restricted rights” applies to only noncommercial computer software and mean the Government’s rights to use a computer program with one computer at one time; transfer a computer program to another Government agency without permission of the Contractor if the transferor destroys all copies of the program and related computer documentation; make the minimum number of copies of computer software required for safekeeping (archive), backup or modification purposes; modify computer software; and permit contractors or subcontractors performing services in support of a contract to use computer software for correcting deficiencies.
“Limited rights” means the rights to use, modify, reproduce, release, perform, display, or disclose technical data, in whole or in part, within the Government.
5. What are some of the relevant DFARS provisions governing data rights?
Subparts 227.71 (Rights in Technical Data) and 227.72 (Rights in Computer Software and Computer Software Documentation) prescribe policies and procedures for the acquisition of technical data and computer software and computer software documentation and rights for the Government to use, modify, reproduce, release, perform, display or disclose the technical data and computer software and computer software documentation.
6. What are the relevant data rights clauses to include in solicitations and government contracts to ensure that the agency obtains the appropriate licensing rights?
The following chart summarizes the appropriate DFARS clauses to include in solicitations and contracts for the acquisition of technical data, computer software and computer software documentation. However, the circumstances of each acquisition may vary. THEREFORE, LEGAL COUNSEL SHOULD ALWAYS BE CONSULTED ON THE APPROPRIATE DFARS CLAUSES TO INCLUDE IN THE CONTRACT.
FAR/ DFARS PATENT, TECHNICAL DATA, AND COMPUTER SOFTWARE CLAUSES
TD = Technical Data CS = Computer Software ICP = Item, Component, or process CSD = Computer Software Documentation = TD
|
| When to Incorporate Clauses/Provisions 252.227 |
7013 |
7014 |
7015 |
7016 |
7017 |
7019 |
7028 |
7030 |
7037 |
| Mandatory if TD for noncommercial ICP is to be delivered |
X |
|
|
X |
X |
|
X |
X |
X |
| Mandatory if noncommercial CS is to be delivered |
|
X |
|
X |
X |
X |
X |
|
|
| Mandatory if TD for commercial items is to be delivered |
|
|
X |
|
|
|
|
|
X |
| Strongly recommended in all solicitations |
X |
X |
X |
X |
X |
X |
X |
X |
X |
| Strongly recommended in all contracts |
X |
X |
X |
X |
|
X |
|
X |
X |
|
SPECIFIC CLAUSES & THEIR USE (See DFARS for Titles):
252.227-7018: All SBIR contracts. (Do not use -7013 or -7014.)
252.227-7025: All if access to less than unlimited rights TD/CS is anticipated. Strongly recommended in all contracts.
252.227-7026: Voluntary clause used only to specifically identify at award TD & CS which may be ordered later.
252.227-7027: Voluntary clause used to order additional deliverables for TD & CS “generated” during performance of the instant contract. Strongly recommended in all solicitations and contracts.
52.227-1: All contracts and solicitations with limited exceptions.
52.227-2: All contracts and solicitations with limited exceptions.
52.227-3: Limited mandatory use in sealed bidding for “commercial” supplies/services & construction with many prohibitions on use.
52.227-10: All which might result in a classified invention/patent.
52.227-11: All R&D [DOD uses this clause with small business or nonprofit].
252.227-7038: All R&D except when 52.227-11 used.
252.227-7039: All if 52.227-11 is used.
252.246-7001: Strongly urged whenever any technical data or software will be delivered under the contract. Using the clause avoids acceptance being “final” with respect to nonconforming markings. Review 246.708 and 246.710 for applicability.
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7. Is it possible for the Government and the contractor to modify the standard licensing rights granted to the Government?
Yes, the parties can modify the standard license rights granted to the Government or obtain rights under circumstances where the Government would ordinarily not be entitled to specific rights. Noncommercial technical data or computer software marked with “Specifically Negotiated Licensing Rights.”
8. Are there broad principles to consider when acquiring licensing rights?
Yes, DoD’s “Intellectual Property: Navigating Through Commercial Waters” identifies the following core principles:
- Integrate IP considerations fully into acquisition strategies for advanced technologies in order to protect core DoD interests.
- Respect and protect privately developed IP.
- Resolve issues prior to award by clearly identifying and distinguishing the IP deliverables from the license rights in those deliverables.
- Negotiate specialized IP provisions whenever the customary deliverables or standard license rights do not adequately balance the interests of the contractor and the Government.
- Seek flexible and creative solutions to IP issues, focusing on acquiring only those deliverables and license rights necessary to accomplish the acquisition strategy.
9. Are there steps that program managers and contracting officers should take when drafting and negotiating contracts to identify and resolve data and data rights issues prior to contract award?
Yes, they include:
- Require Offerors to assert all restrictions on deliverable technical data and computer software (both commercial and noncommercial) up front, in their proposals
- Evaluate the data and data rights packages being offered
- Negotiate for mutually agreeable specialized license rights whenever the standard license categories do not meet both parties’ needs
- Challenge asserted restrictions if necessary to account for Government investments.
- Spell out the allocation of data rights during all stages of procurement from solicitation to award, to delivery through Broad Agency Announcement (BAA), Request for Proposals (RFP), Statement of Work (SOW) and Contract Data Requirements List (CDRL).
- Incorporate the appropriate data rights clauses in the contract.
- Specify: content, recording/storage format, delivery medium, markings (classification, distribution statements, legends, warnings), primary distribution, recording/storage format (paper, digital, application, PDF) and delivery schedule in the SOW”, CDRL and “Solicitation, Offer and Award.
- Review all deliverables prior to acceptance to determine whether they include restrictive and nonconforming markings or other limitations limiting the agency’s data rights license. Deliverables containing unacceptable restrictive markings should not be accepted and legal counsel should be consulted for advice.
10. Does the receipt of confidential and proprietary information present problems for program managers and contracting officers during the acquisition process?
Yes, a contractor may disclose confidential business information, including trade secrets, to the Government in providing services and goods under an acquisition contract. A trade secret is a “formula, practice, process, design, instrument, pattern or compilation of information” not generally known, which may provide a company with a competitive advantage.
If the contractor marks information that it provides to the Government with restrictive markings or “proprietary,” disclosure by a government employee could result in a violation of 18 USC 1905, punishable by imprisonment, a fine and termination of employment.