Patent Law

Book Review Monday: Intellectual Property in Government Contracts

By Stephen Albainy-Jenei

OK, I admit it. I judge a book by it’s cover. There, I said it. I’m not proud of it but I’m very visually oriented and there is something about a beautifully designed cover of a book that makes me want to open and read the pages inside.  So it was when I received my copy of “Intellectual Property in Government Contracts: Protecting and Enforcing IP at the State and Federal Level” by James G McEwen, David S Bloch and Richard M Gray (Oxford University Press, USA).

I immediately glanced over the (Army?) green cover. Like the subject of the book, the cover evokes an image of government-issued surplus. Inside the covers, however, you’ll find a step-by-step guide to the protection of IP in government contacts and the various ways to enforce IP rights in the event the government violates them

Federal government contracts can be a trough/source of business for private companies, particularly for companies engaged in developing new technology and products. This does not apply to just the $787 billion being doled out in the current economic stimulus bill (a/k/a the American Recovery and Reinvestment Act). The federal government spends over $100 billion each year on contracts, grants, and other agreements with private companies to develop new products and processes.

This brings up important questions relating to intellectual property since the Bayh-Dole Act (35 U.S.C. Sects. 200-212) allows contractors to retain title to intellectual property developed under federally- funded projects in order to bring the technology to the commercial marketplace. Under the Act, a contractor is now permitted to retain title to patented or patentable subject inventions subject to reporting and other requirements in 35 U.S.C. Sect. 202 within a specific time period to identify and protect patent rights. Failure to do so could result in a contractor losing title to such intellectual property.

The government is typically granted a non-exclusive, nontransferable, irrevocable, paid-up license to practice (or have practiced) the invention, for or on behalf of the U.S. Government. Infringement mostly occurs from other contractors doing business with the government. A contractor’s only recourse in the event of unauthorized use of its patent, whether by the government or another contractor in the performance of its own government contract, is a lawsuit against the government, not against the contractor, and only for money damages, not injunctive relief.

Books related to government contracting usually focus only on contracting with the U.S. government. Here, Intellectual Property in Government Contracts provides a comprehensive survey of U.S. federal intellectual property procurement laws in the first four chapters but then provides a detailed analysis of state procurement rules over a whopping 372 pages. This book is a valuable resource for anyone dealing with U.S. federal and state procurement systems providing strategies for handling government misuse of private-sector IP rights.

About the Authors

• James McEwen, a partner of Stein McEwen LLP, has prepared and prosecuted patent applications in computer hardware and software, control systems, mechanical and optical devices, semiconductor manufacturing, batteries, and display device technologies.
• David S. Bloch is a partner with the law firm of Winston & Strawn, LLP., at their San Francisco office.
• Richard M. Gray is Associate General Counsel (Acquisition & Logistics), Department of Defense Office of General Counsel.

You can purchase “Intellectual Property in Government Contracts: Protecting and Enforcing IP at the State and Federal Level,” by James G McEwen, David S Bloch and Richard M Gray (Oxford University Press, USA), at Amazon.

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Full post as published by Patent Baristas on August 17, 2009 (boomark / email).