- 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.