- How can I protect my IP rights when contracting with the 政府ernment?
- What are good practices for protecting Intellectual Property?
*新: Be sure that you and your legal counsel understand the new America Invents Act, which is the most significant change to the patent law since 1952. Intellectual Property (IP) is any creation of the the intellect that may have commercial value. 对科技企业, 这可能包括专利, 版权, 业务方法, 工业过程, 商标和某些工业设计. For a startup or small technology company, IP is likely the company’s most valuable asset. 你必须理解IP, 你作为知识产权所有者的权利, 以及政府使用你的IP的法律.
bayh - dole法案
The Bayh-Dole Act (also called the University and 小型企业 Patent Procedures Act) is United States legislation dealing with intellectual property developed as part of federal 政府ernment-funded research. 贝赫-多尔于1980年被采纳，在美国35个州被编成法典.S.C. §200-212由37 C执行.F.R. 401. 在其他方面，它给了美国.S. 大学, 小型企业es and nonprofit organizations control of their inventions and other intellectual property that result from such funding. 该法案, sponsored by senators Birch Bayh of Indiana and Bob Dole of Kansas, 是美国国会在12月12日颁布的吗, 1980.
Perhaps the most important change associated with the Act is that it reversed the presumption of title. Bayh-Dole允许建立大学, 小型企业, or nonprofit institution to elect to pursue ownership of an invention in preference to the 政府ernment.
在Bayh-Dole法案颁布之前，美国联邦政府.S. 政府已经积累了30,000项专利. Only approximately 5-percent of those patents were commercially licensed.
*新: 检讨个案 斯坦福v. 罗氏公司, which describes how the courts have interpreted the Bayh-Dole Act and how 大学 will consider their patent policies in lieu of this late 2011 ruling. If you are licensing university technology and maturing it through the SBIR/STTR program, 这个案子对你很重要.
政府 & 知识产权
Companies using the SBIR/STTR program must understand the implications of intellectual property (IP) rights and the limitations and restrictions caused by contracting with the 政府ernment. If the 政府ernment funds development of your innovation or technology, you grant them a royalty-free license to use your invention world-wide. 然而, the 政府ernment does not have the right to commercialize your invention. Therefore, you retain the right to make money from your invention.
在这里, invention “means any invention” that is “conceived or first actually reduced to practice in the performance of work under a funding agreement.” This definition covers a wide range of research activities that are either partially or completely federally funded.
Small businesses and non-profit organizations can retain title to intellectual property in a federally funded “subject invention.” In exchange for this title, the organization is required to:
- Elect to retain title in writing within a statutorily prescribed timeframe
- 授予联邦政府非排他性, 不可转让的, 不可撤销的, paid-up license to practice or have practiced on its behalf throughout the world
- Actively promote and attempt to commercialize the invention
- Not assign the rights to the technology, with a few exceptions
The 政府ernment’s march-in rights are one of the most challenging provisions in Bayh-Dole. 它允许资助机构, 主动或应第三方的要求, to effectively ignore the exclusivity of a patent awarded under the act and grant additional licenses to other “reasonable applicants.” This right is strictly limited and can only be exercised if the agency determines, 在一项调查, 满足一定的标准. The most important of these is a failure by the contractor to take “effective steps to achieve practical application of the subject invention” or a failure to satisfy “health and safety needs” of consumers.
虽然这个权利是, 在理论上, 非常强大的, it has not proven to be so in terms of its practical application — to date, 没有一个联邦机构行使其游行权利. March-in petitions have been made to the National Institutes of Health, however. 例如, pharmaceutical companies occasionally instruct their legal departments to evaluate the risk of march-in prior to negotiating licenses for drugs developed under Bayh-Dole coverage. This is important to SBIR/STTR ventures because your ownership of your IP is one of your most important and valuable assets. The future growth of your company likely hinges on your ability to raise money based on the valuation of your IP. 了解你的权利是很重要的, 这些权利的范围和限制, 以及如何最好地保护你的IP.
什么出口限制会影响sbir / sttr资助的IP?
有两个非常重要的美国.S. 出口 control laws that can affect SBIR/STTR ventures: International Traffic in Arms Regulations (ITAR) and Export Administration Regulations (EAR). The objective of both laws is to prevent disclosure or transfer of sensitive information to a foreign national by controlling access to specific types of technology and the associated data.
The ITAR contains a United States Munitions List (USML) of restricted articles and services. The EAR contains a Commerce Control List (CCL) of regulated commercial items, including “dual-use” items that have application in both commercial and military markets.
符合ITAR或EAR标准, a manufacturer or 出口er whose articles or services appear on the USML or CCL lists must register with the U.S. State Department’s Directorate of Defense Trade Controls (DDTC). ITAR和EAR合规性可能具有挑战性. 例如, data related to a specific type of technology may need to be transferred over the Internet or stored locally outside the U.S. 为了使业务流程顺利进行.
It is the responsibility of the 出口er to take all needed steps to certify that they are in compliance with these 出口 regulations. 其后果可能是昂贵的. 如果不遵守《bg真人》，将会受到处罚, 民事罚款高达500美元,每违反000. Criminal penalties include fines of up to $1,000,000 and 10 years imprisonment per violation. Under EAR, maximum civil fines may reach $250,每违反000. Criminal penalties can be as high as $1,000,000 and 20 years imprisonment per violation.
Itar [22 CFR 120-130]
Ear [15 CFR 730-774]
Regulates items designed for commercial purpose which could have military applications such as computers or software.
Regulates goods and technology designed to kill or defend against death in a military setting.
Includes space related technology because of application to missile technology.
Licensing addresses competing interests and foreign availability.
Includes technical data related to defense articles and services.
Combines commercial and research objectives with national security.
Strict regulatory licensing – does not address commercial or research objectives.
Government contract law, public law, and intellectual property law are all entwined. Protecting your intellectual property (IP) and your rights to that property can be a complex task. 当处理保护你的IP时，要积极主动. Get the requisite knowledge before you need it, and act on it consistently.
当你成功做到这一点的时候, you give yourself the chance to have the 政府ernment fund your creation of breakthrough technologies that you will own and can profit from.
To be proactive with your IP, you must take a number of steps. 其中包括找一位优秀的知识产权律师, learning about the law and your rights under the SBIR and STTR programs, 研究保密协议的使用, 分包合同和团队协议, 以及制定知识产权披露计划.
一个好的律师. You need both a good corporate attorney and a good IP attorney. The following are some suggestions for selecting a good attorney:
- Look for an attorney that is a good match for you scientifically or technically; doing so will reduce your cost associated with getting them up to speed.
- Look for an attorney that has experience with patents in your state and has prosecuted 版权 and trademarks and is knowledgeable about trade secrets.
- Look for an attorney who will help you help yourself – that is, help educate you and your employees in 政府ernment contract law so that you can avoid IP issues.
Hire the best attorney and find a way to pay for this important service. 好的律师是物有所值的.
认识律法. The law says that you have a right to the inventions you create under an SBIR or STTR contract – it is your IP. 然而, you must learn more about your specific rights so that you may be proactive in protecting what you own. One way to protect your IP is to make sure you identify and mark those proposal pages that contain company private or proprietary information. Every agency has different rules about how you must mark proprietary information in your proposal.
Some proposal writers try to put all proprietary information in one location within the proposal, thereby limiting the number of pages that must be declared as containing company private information. The agencies warn proposal writers not to mark every page of their proposals as containing private information.
Assume your proposal will be the subject of a Freedom of Information Act (known as FOIA) request. Make it easy for agencies to exclude your private information from FOIA disclosure by limiting private information to as few pages as possible in your proposal.
使用保密协议(NDA). 主动计划合作, teaming and subcontracting discussions in advance by working with your attorney and using an IP disclosure plan. 在与客户的讨论中,” you should think through the path or process in which you disclose your IP. 例如, you may never want to fully disclose some company secrets. Ask yourself, “At what point in the discussion does an NDA need to be signed to continue?” When you reach that point, go no further until an NDA is executed. 政府不签署保密协议. 然而, you will want to use NDAs when dealing with subcontractors, 咨询顾问和非盈利研究机构.
分包商. 根据法律，你必须保护你的分包商的知识产权. You have to learn how best to do that within the constraints of your own rights and contractual obligations.
According to the SBA Policy Directive for the SBIR program, your SBIR/STTR data rights clauses are non-negotiable and must not be the subject of negotiations pertaining to an SBIR Phase III award, 或在奖金管理期间减少或取消. An agency must not, in any way, make issuance of an SBIR Phase III award conditional on data rights.