DoD

1
Intellectual Property Navigating through
Commercial Waters
ABA Seminar on RD Commercial Practices and
Government Contracts 22 April 2002
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Government Concern
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Basic Government/IndustryCultural Value Conflict

• Industry wants to protect its most valuable
  commodityIP, from unauthorized disclosure
• vs.
• Government traditionally seeks
• delivery for everything it has paid for, whether
  needed or not
• unlimited patent or data rights to enhance future
  competition

A cultural and policy change is required
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Industry IP Concerns

• Government requires too much data and demands
  excessive rights
• Government doesnt properly protect industrys
  data from competitors
• Regulations are too complex, difficult to
  understand, and do not reflect business realities
• Trade secret protection issue

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Industry IP Concerns (Continued)

• Regulations do not ensure subcontractor rights
  are protected
• Acquisition community doesnt feel empowered to
  move from historical paradigm
• Training issue

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Industry IP Concerns (Continued)

• Contracting officers typically dont understand
  or take advantage of existing inherent IP
  flexibility in regulations
• Addressed in part by IP guide

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Policy Letters

• Sep 5, 2000 USD(ATL) letter
• Announced new IP thrust to attract commercial
  firms
• Charged DUSD(AR) to develop guide
• Government/industry team recommended process,
  regulatory and legislative initiatives

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Policy Letters (Continued)

• Jan 5, 2001 USD(ATL) letter
• Pursue DFARS, Part 227 revisions
• Pursue possible patent clause deviations
• New emphasis
• Use specifically negotiated license rights
• special licenses
• Exercise flexibility when negotiating patent
  rights
• Use performance-based acquisition strategies to
  obviate need for data/rights
• Acquire only data/rights truly needed

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Policy Letters (Continued)

• Dec 21, 2001 USD(ATL) letter
• Distributed Version 1.1 of the Guide and promoted
  is wide dissemination
• Reinforced
• value of intellectual property to commercial
  firms
• Need for cultural change to embedded obsolete
  thinking
• Change current practices and actively promote
  creative thinking within the framework of current
  regulations

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Intellectual PropertyNavigating through
Commercial Waters
Guide Organization

• Ch. 1 The Principles
• Ch. 2 Intellectual Property Framework
• Ch. 3 Acquisition Planning
• Ch. 4 Issues and Solutions
• Appendices
• Policy letters, supplement materials, FAR/DFARS
  clause summaries, history, references, and
  resources

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IP Guide Principles

• 1. Integrate IP considerations fully into
  acquisition strategies for advanced technologies.

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IP Guide Principles (Continued)

• 2. Respect and protect privately developed IP
  because it is a valuable form of intangible
  property that is critical to the financial
  strength of a business.

13
IP Guide Principles (Continued)

• 3. Resolve issues prior to award by clearly
  identifying and distinguishing the IP
  deliverables from the license rights in those
  deliverables.

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IP Guide Principles (Continued)

• 4. Negotiate specialized IP provisions whenever
  the customary deliverables or standard license
  rights do not adequately balance the interests of
  the contractor and the Government.

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IP Guide Principles (Continued)

• 5. Seek flexible and creative solutions to IP
  issues, focusing on acquiring only those
  deliverables and license rights necessary to
  accomplish the acquisition strategy.

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Issues Covered by the Guide

• Appropriate use of the patents clause
• Patent rights clause
• Technical data rights
• Computer software rights
• Other clause issues

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IP Guide Summary

• Acquisition and legal communities need to embrace
  the IP principles and guide philosophy
• Use inherent flexibility in regulations

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IP Guide Summary (Continued)

• Entire acquisition team must be engaged to ensure
  commercial industry involvement, while ensuring
  government needs are met
• Free IP negotiations from focusing on how much
  money each party contributes, to looking at
  entire deal

Your comments on the guide will help set the
foundation for these imperatives!
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Next Steps - First Do No Harm!

• IP working group developing campaign strategy
• Outreach Communication
• Speeches, articles, press letters
• NCMA World Congress 2002 panel
• Training
• On line/CD ROM training planned
• Commenced script writing - awaiting funding for
  video development

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Next Steps - First Do No Harm!(Continued)

• Legislative initiatives gaining momentum
• Bayh Dole possibilities
• permit contracting officers flexibility in
  negotiating certain government rights
• permits trade secrets
• relaxed subject invention definition

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Next Steps - First Do No Harm!(Continued)

• Regulatory initiatives
• FAR plain language rewrite ofPart 27
• DFARS case on the treatment of proprietary
  information

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Acquisition Initiatives Website

• Acquisition Initiatives
• http//www.acq.osd.mil/ar/
• Resources IP Guide http//.www.acq.osd.mil/ar/i
  ntelprop

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Points of Contact

• Lt Col Gregory Redick, OSD(ATL)AI
• 703/693-7795
• gregory.redick_at_osd.mil
• http//www.acq.osd.mil/ar/
• Karen Sorber, LMI
• 703/917-7219
• ksorber_at_lmi.org
• John Ablard, LMI
• 703/917-7243
• jablard_at_lmi.org