Overview
This section outlines the procedures and goals for government agencies to manage patent rights, ensuring that subject inventions developed under federal contracts are properly identified, reported, and legally secured. It establishes the responsibilities of the contracting officer and legal counsel in monitoring contractor compliance and protecting the government’s interest in intellectual property.
Key Rules
- Administrative Goals: Agencies must ensure inventions are identified and reported, patent applications are filed timely, the government’s rights (licenses or assignments) are documented, and commercial utilization is pursued.
- Lead Agency Designation: For contracts funded by multiple agencies, one agency must be designated to handle patent administration.
- Contracting Officer (CO) Responsibilities: The CO is the primary recipient of invention disclosures and reports, which must be promptly forwarded to legal counsel. The CO is also responsible for requesting missing documentation and taking enforcement actions.
- Compliance Monitoring: Agencies must establish follow-up procedures, focusing specifically on R&D contracts, high-dollar awards, or contractors with high invention potential. Monitoring may include inspecting laboratory notebooks and reviewing technical reports.
- Securing Title: A clear chain of title must be established via formal assignments for full ownership or confirmatory instruments for licenses; these instruments should be recorded with the U.S. Patent and Trademark Office.
- Enforcement Mechanisms: If a contractor fails to comply with reporting or disclosure requirements, the government may withhold payments or document the failure in the contractor’s official performance record.
- Confidentiality: Invention disclosures are protected from public disclosure for a reasonable time to allow for the filing of patent applications under 35 U.S.C. 205.
Practical Implications
- Audit Readiness: Contractors performing R&D work must maintain meticulous laboratory notebooks and internal disclosure records, as government personnel have the authority to inspect these documents to identify unreported inventions.
- Risk of Payment Withholding: Failure to submit required confirmatory instruments or invention reports within the specified timeframes (e.g., 6 months for confirmatory instruments) can lead to direct financial penalties through the withholding of contract payments.