Intellectual Property Considerations

In this lesson, you will learn:

  • What laws provide protection for SBIR/STTR ventures?
  • What do I need to know about the government and IP rights?
  • What are “march in” rights?
  • What export restrictions impact SBIR/STTR funded IP?
  • How can I protect my IP rights when contracting with the government?
  • What are good practices for protecting Intellectual Property?
    *New: 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. For technology companies, this may include patents, copyrights, business methods, industrial processes, trademarks and certain industrial designs. For a startup or small technology company, IP is likely the company’s most valuable asset. It is imperative that you understand IP, your rights as an IP owner, and the law in regards to the government’s use of your IP.

     

BAYH-DOLE ACT

《kb88手机版app》(又称《凯时kb88手机版app》)是美国关于知识产权的法律,是联邦政府资助的研究的一部分. Adopted in 1980, Bayh-Dole is codified in 35 U.S.C. § 200-212 and implemented by 37 C.F.R. 401. Among other things, it gives U.S. universities, 小型企业和非营利组织控制着他们的发明和其他知识产权,这些知识产权是由这些资助产生的. The Act, sponsored by senators Birch Bayh of Indiana and Bob Dole of Kansas, was enacted by the United States Congress on December 12, 1980.

也许与该法案相关的最重要的变化是它推翻了所有权推定. Bayh-Dole permits a university, small business, 或者非营利机构选择追求发明的所有权而不是政府.

Prior to the enactment of Bayh-Dole, the U.S. government had accumulated 30,000 patents. Only approximately 5-percent of those patents were commercially licensed.

*New: Review the case of Stanford v. Roche, 它描述了法院是如何解释《凯时kb88手机版app》的,以及大学将如何考虑他们的专利政策来代替2011年底的裁决. If you are licensing university technology and maturing it through the SBIR/STTR program, this case is very important to you.

GOVERNMENT & IP RIGHTS

使用SBIR/STTR计划的公司必须了解知识产权(IP)权利的含义,以及与政府签订合同所造成的限制和限制. If the government funds development of your innovation or technology, you grant them a royalty-free license to use your invention world-wide. However, the government does not have the right to commercialize your invention. Therefore, you retain the right to make money from your invention.

 

Here, “发明”是指“根据资助协议构思或首次实际用于工作实践的任何发明”.这一定义涵盖了由联邦政府部分或全部资助的广泛研究活动.

 

小型企业和非营利组织可以在联邦资助的“主题发明”中保留知识产权.” In exchange for this title, the organization is required to:

  • Report each disclosed invention to the funding agency
  • Elect to retain title in writing within a statutorily prescribed timeframe
  • File for patent protection
  • Grant the federal government a non-exclusive, non-transferable, irrevocable, 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
  • Share royalties with the inventor
  • Use any remaining income for education and research
  • Give preference to US industry and small business

The government’s march-in rights are one of the most challenging provisions in Bayh-Dole. It allows the funding agency, on its own initiative or at the request of a third party, 有效地忽略根据该法案授予的专利的排他性,并向其他“合理的申请人”授予额外的许可.” This right is strictly limited and can only be exercised if the agency determines, following an investigation, that certain criteria are met. 其中最重要的是,承包商未能采取“有效步骤实现主题发明的实际应用”,或未能满足消费者的“健康和安全需要”.

Though this right is, in theory, quite powerful, it has not proven to be so in terms of its practical application — to date, no federal agency has exercised its march-in rights. March-in petitions have been made to the National Institutes of Health, however. For example, 制药公司有时会指示他们的法律部门,在为Bayh-Dole保险范围内开发的药物谈判许可证之前,评估大规模上市的风险. 这对SBIR/STTR风险投资很重要,因为你的IP所有权是你最重要和最有价值的资产之一. 你的公司未来的增长可能取决于你的融资能力,这取决于你对你的IP的估值. It is important to understand your rights, the extent of and contraints on those rights, and how to best protect your IP.

WHAT EXPORT RESTRICTION IMPACT SBIR/STTR FUNDED IP?

There are two very important U.S. 可能影响SBIR/STTR合资企业的出口管制法律:《凯时kb88手机版app》和《凯时kb88手机版app》. 这两项法律的目标是通过控制对特定类型技术和有关数据的访问,防止向外国国民披露或转让敏感信息.

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.

To be ITAR or EAR compliant, 产品或服务出现在USML或CCL名单上的制造商或出口商必须在美国注册.S. State Department’s Directorate of Defense Trade Controls (DDTC). ITAR and EAR compliance can be challenging. For example, 与特定技术相关的数据可能需要通过互联网传输或存储在美国以外的本地.S. in order for business processes to flow smoothly.

出口商有责任采取一切必要步骤,以证明他们遵守了这些出口条例. The consequences may be expensive. Penalties may occur for failure to comply with ITAR, carrying civil fines as high as $500,000 per violation. Criminal penalties include fines of up to $1,000,000 and 10 years imprisonment per violation. Under EAR, maximum civil fines may reach $250,000 per violation. 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]

Covers military items or defense articles.

管制为商业目的而设计,但可能具有军事用途的物品,如电脑或软件.

Regulates goods and technology designed to kill or defend against death in a military setting.

Covers both the goods and the technology.

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.

 

 

Learn More

Visit www.export.gov for a broad view of requirements and regulations. 工业和安全局对商务部出口管制也有介绍 webinars on EAR compliance. The U.S. Department of State also has more information on ITAR.

THE BEST IP APPROACH

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. When dealing with protecting your IP, be proactive.  Get the requisite knowledge before you need it, and act on it consistently.

When you are successful in doing this, 你给自己一个机会,让政府资助你创造突破性的技术,你将拥有并可以从中获利.

PROTECTING YOUR IP

To be proactive with your IP, you must take a number of steps. These include getting a good IP attorney, learning about the law and your rights under the SBIR and STTR programs, studying the use of non-disclosure agreements, subcontracts and teaming agreements, and creating an IP disclosure plan.

A Good Attorney. 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.
  • 找一个在你的州有专利经验,起诉过版权和商标,了解商业秘密的律师.
  • Look for an attorney who will help you help yourself – that is, help educate you and your employees in government contract law so that you can avoid IP issues.

Hire the best attorney and find a way to pay for this important service. Good attorneys are worth the cost.

Learn about the Law. 法律规定,根据SBIR或STTR合同,你有权拥有你创造的发明——这是你的知识产权. However, 你必须更多地了解你的具体权利,这样你才能积极地保护你所拥有的东西. 保护你的IP的一种方法是确保你识别并标记那些包含公司私人或专有信息的提案页面. Every agency has different rules about how you must mark proprietary information in your proposal.

Read the proposal preparation instructions carefully.

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.  这些机构警告提案作者,不要把提案的每一页都标记为包含私人信息.

Assume your proposal will be the subject of a Freedom of Information Act (known as FOIA) request. 通过在你的提案中将私人信息限制在尽可能少的页数,使代理机构更容易将你的私人信息排除在《凯时kb88手机版app》的披露之外.

Use of Non-disclosure Agreements (NDA). Proactively plan partnering, 通过与你的律师合作并使用知识产权披露计划,提前进行团队合作和分包讨论. In discussions with the “customer,” you should think through the path or process in which you disclose your IP. For example, 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. The government does not sign NDAs. However, you will want to use NDAs when dealing with subcontractors, consultants and nonprofit research institutions.

Subcontractors. By law, you must protect your subcontractor’s IP. 你必须学会如何在自己权利和合同义务的约束下做到最好.

According to the SBA Policy Directive for the SBIR program, 你方的SBIR/STTR数据权利条款是不可协商的,并且不能成为有关SBIR第三阶段裁决的谈判主题, or diminished or removed during award administration. An agency must not, in any way, make issuance of an SBIR Phase III award conditional on data rights.

 

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