FAR Patent Rights Clause Reminders

Posted on April 18, 2008 by Sheppard Mullin
  • Check, is the patent rights clause in your RFP?
  • Should it be?
  • The clause gives government rights in "subject inventions."
  • You have a "subject invention" if:
    • It is "conceived" or "reduced to practice" during contract performance;
    • And there is a "close" relationship between invention and SOW;
    • Or you can't prove otherwise - record keeping is all important
  • You may have a "subject invention" even if:
    • You filed your patent application before contracting;
    • Your invention cost was properly charged to IR&D
  • You must disclose a "subject invention" within:
    • 2 months of your internal "invention" report; or
    • 6 months of learning of the "invention."
  • Disclosure is required for "inventions" - this means inventions that "are" or "may be" patentable.
  • Failure to timely disclose can result in your forfeiture of all rights.
  • "Subject inventions" cannot be exclusively licensed for foreign manufacture.
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