The Government's Patent Policy: The Bayh-Dole Act and "Authorization and Consent"

10/6/2002

Intellectual Property Litigation, Interferences, and IP Due Diligence

MoFo News Item

The U.S. Constitution recognizes that the Federal Government may sometimes take private property for public use, but only with just compensation.[fn1] Private property covered by this protection includes the intellectual property of private citizens, whether individuals or corporations. As discussed in this Briefing Paper, nearly all the laws and regulations governing the Federal Government's rights in intellectual property created by others were developed in a national security context where the Federal Government was providing most, if not all, of the funding for research and development. In that context, it was imperative that the Federal Government be able to use what technology it needed, when it needed it, and without administrative or legal impediments. Since the 1970s, however, the investment in U.S. research and development has become largely private. While the Federal Government still has the same national security needs for technology, beginning with the technology transfer movement in the early 1980s, lawmakers and federal policymakers have been striving to strike more of a balance, to enable the Federal Government can satisfy its needs without resorting to unilateral "takings," "march-in" actions, or infringement.[fn2]

This Briefing Paper addresses two aspects of the Government's patent policy: (1) the Bayh-Dole Act's allocation of rights in subject inventions developed in the course of a funding agreement, and (2) "authorization and consent" under 28 U.S.C. � 1498, which limits a patentee's remedy when the Federal Government or a third party acting on its behalf infringes on a patent to a suit in the U.S. Court of Federal Claims for a reasonable royalty.

Bayh-Dole Act

Background

The Bayh-Dole Act of 1980[fn3] affects the U.S. patent system, which finds its basis in the U.S. Constitution. The Constitution empowers Congress to "promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries."[fn4] Title 35 of the U.S. Code contains the statutes governing the U.S. patent system. The Bayh-Dole Act overlays title 35 in describing the Federal Government's rights in inventions that involve federal funding.

The scope of the federal statutes, regulations, and policies that led to and include the Bayh-Dole Act cover not only patented inventions, but inventions for which a patent application is pending and those that are protected as trade secrets because the invention is unpatentable or because the inventor simply chose trade secret protection over a patent. Before 1980, the Federal Government's consistent position was that the results of any research and development funded with taxpayer's money should be in the public domain and freely available to the public. This concept is counter to the intellectual property system that provides the inventors, authors, sources of goods and services, and trade secret holders a limited monopoly on the right to make, use, sell, copy, make derivative works, display, perform, and other such actions.

Technology Transfer

In the late 1970s and early 1980s, the so-called "technology transfer" movement arose within the Federal Government. As the funding of Government laboratories decreased, the goal of the movement was to transfer federally developed technology to the private sector.[fn5] The private sector would then expend the resources to commercialize the technology, motivated by the potential of profit. By engaging in technology transfer, the Federal Government hoped to (a) encourage university professors to publish the results of research at their own discretion, (b) increase the number of patents for technology resulting from Government funding, and (c) create a uniform Federal Government patent policy.

The specific objectives of the Bayh-Dole Act within the several statutes comprising the technology transfer movement are to (1) encourage maximum participation of small business firms and nonprofit organizations in federally supported research and development efforts, (2) promote collaboration between commercial concerns and nonprofit organizations, (3) ensure that the Government obtains sufficient rights in federally supported inventions to meet its needs, and (4) protect the public against nonuse or unreasonable use of inventions.[fn6] Technology transfer as implemented in the Bayh-Dole Act resulted in transfer of title to inventions developed with Government funding to the private sector.

Elements Of The Act

As will be explained in more detail below, in addition to granting title to inventions to the private party, the Bayh-Dole Act has four main effects on the relationship between the Federal Government and the private party when federal funding is involved:

  1. The Federal Government receives a license in subject inventions.
  2. The private party must notify the Government of inventions.
  3. The preference for U.S. industry that is found in all technology transfer programs is included.
  4. The Federal Government retains march-in rights.

Covered Parties

Specifically, the Bayh-Dole Act permitted small businesses and nonprofit organizations to (a) retain title to inventions they created while working on a Government-sponsored program, (b) apply for and receive patents on those inventions, and (c) pursue options to commercialize those discoveries.[fn7] A 1983 presidential memorandum expanded the scope of the Bayh-Dole Act beyond small businesses and nonprofit organizations to cover any private party to a funding agreement.[fn8] By permitting large, for-profit companies to retain title to inventions developed with Federal Government funding, the Government hoped that they would be motivated to commercialize the technology for the public's benefit.

Covered Agreements

The Bayh-Dole Act's coverage is not limited to procurement contracts governed by the Federal Acquisition Regulation but extends to all "funding agreements" for research and development.[fn9] "Funding agreements" include contracts, grants, and cooperative agreements.[fn10] Although it has not been tested in court, the prevailing view is that the Bayh-Dole Act does not apply to the Department of Defense's so-called "other transactions"--transactions other than contracts, grants, or cooperative agreements for research or prototype projects.[fn11]

"Invention" & "Subject Invention"

The Bayh-Dole Act deviates tremendously from commercial patent principles beginning with the definition of "invention." This and other definitions and principles embodied in the Act present a dangerous trap for the unwary that take federal funding for research and development without careful consideration of the Act's scope. "Invention" is defined as "any invention or discovery which is or may be patentable or otherwise protectable under this title."[fn12] An unsophisticated company may not realize that under this definition, the statutory scheme applies not just to patents, the expected application of "invention," but it also applies to the technology the company intended to protect by keeping it a trade secret.

Only "subject inventions" are covered by the Bayh-Dole Act's provisions, so it is important to understand the definition of this term. "Subject invention" is "any invention of the contractor conceived or first actually reduced to practice in the performance of work under a funding agreement."[fn13] This means that a "subject invention" includes two extreme examples and everything in between. The following scenarios are the extremes: (1) a technology is conceived and developed at private expense, but the private party takes Government funding to simulate or demonstrate the technology in its first actual reduction to practice, and (2) an invention is conceived while a private party is performing under Government funding, but all development and reduction to practice is accomplished at private expense. The importance of these situations is found in the Government license rights, discussed next.

Government License

The main intent of the Bayh-Dole Act is to give the private party title to the invention in the hopes that a patent will result and the private party will commercialize the result to benefit the public. The Government, however, retains a license in the technology. Under the Act, the Government receives a "nonexclusive, nontransferable, irrevocable, paid-up license to practice or have practiced for or on behalf of the United States any subject invention throughout the world."[fn14] These are the minimum, mandatory rights the Government must take, and the Government cannot currently waive its right to this license. Even if a federal agency believes there are inequities in the two extreme scenarios above, the agency may not take less than the Government license rights. The Government's license is paid-up for use of the subject invention, even when Government funding played a limited role in the development of the subject invention. By contrast, in a commercial setting, an investor would gain rights in an invention commensurate with its share of the investment.

Government license rights have become more of a problem as the measurement of success for technology companies has evolved. In the 1950s and 1960s, companies were considered successful if they had lots of visible inventions and improvements in technology on the market. Today, a technology company must demonstrate on a quarterly basis that a bottom-line valuation of its intellectual property shows that there is a good likelihood that the company can generate a profit from licensing the technology. Some companies refuse to expose their core technologies by receiving Government funding that might cause the Government to gain license rights in the technology. While they might sell commercial item products or engage in research and development for "peripheral" products, they will not engage in research and development that may affect their rights in their core technologies. These companies have several concerns.

The term "Government" as used in the Bayh-Dole Act includes all Federal Government agencies, and the statute makes provisions for the term to apply to foreign governments in some instances.[fn15] It has been argued that "Government" also includes state and local governments. To the contractor, this means that its entire "government" market must receive a royalty-free license. Thus, the contractor's chances of earning a profit are extremely weak, even though the contractor may have invested a substantial amount of its own funds in the subject invention.

Moreover, the Bayh-Dole Act permits the Government to have a third-party practice the subject invention on its behalf--also royalty-free.[fn16] For a company that is a Government contractor, it is distressing that the company's one customer for some products and services, the Federal Government, can hand the technology it developed, and to which it has title, to its fiercest competitor. From the inventing contractor's perspective, it gets no consideration whatsoever for the major damage to its market share. For companies that do not do much Government contracting, this concept is simply bizarre.

Notification Of Invention

The Bayh-Dole Act requires private party inventors to disclose subject inventions to the Government.[fn17] Because the term "subject invention" includes trade secrets as well as inventions that are intended to be the subject of patents, this notification process imperils protection of the trade secret. Under procurement contracts governed by the FAR,[fn18] a strict disclosure schedule is set up. The contractor must disclose the subject invention to the Contracting Officer within (1) two months after the inventor discloses it in writing to contractor personnel responsible for patent matters or (2) six months after the contractor becomes aware that a subject invention has been made, whichever is earlier.[fn19] Although there are no documented cases, the Government has the right to seize title to the invention if the notifications are not appropriately made.[fn20] Acquiring companies, investment banks, and venture capitalists become nervous when they realize that the title to technology that forms the basis for a company's business could be forfeited if a simple administrative action, such as notification, is not made promptly and correctly.

Preference For U.S. Industry

As with all the other technology transfer programs, there is a preference for U.S. industry tied to the use of Government funds in research and development. Under the Bayh-Dole Act, the private party holding title to a subject invention must show that any potential licensee has agreed that any products embodying or produced through the use of the subject invention will be "manufactured substantially in the United States."[fn21] In a global economy, this requirement poses difficult interpretation problems for the Government and private sector parties. Compliance can require a complicated analysis of corporate structure and make-or-buy decisions down to the component level to establish that "substantial manufacture" is in the United States.

March-In Rights

Along with the Government license requirement, march-in rights are considered the most inflexible and burdensome requirements of the Bayh-Dole Act, even though practitioners experienced in the area cannot identify a single instance in which the Federal Government exercised its march-in rights. Practitioners from some Government agencies, however, know of cases in which the federal Government used the threat of exercising march-in rights to obtain other concessions from the private party during the course of negotiations. Essentially, the Act's march-in rights provision permits the federal Government to order the private party to grant a compulsory license to a third party (including competitors) in inventions that the Government feels will benefit the public when the inventor is not taking reasonable steps to make the technology useful.[fn22] To exercise march-in rights, the Act requires the Government to determine that the private party (a) is not taking effective steps to achieve practical application of the invention within a reasonable time,[fn23] (b) is not reasonably satisfying national health and safety needs,[fn24] (c) is not reasonably satisfying regulatory requirements for public use,[fn25] or (d) has not received the required permission from the Government under the U.S. industry preference provision before licensing.[fn26]

Again, the mere threat that the Government will exercise march-in rights, though it is arguably a dormant requirement, causes acquiring companies, investment banks, and venture capitalists great concern.

Legislative Proposals

Proposals to amend the Bayh-Dole Act to help eliminate barriers preventing new entrants to Government contracting were the subject of hearings held Representative Tom Davis (R-Va.), Chairman of the Subcommittee on Technology and Procurement Policy of the House Government Reform Committee on July 17, 2001, and more recently on May 10, 2002.[fn27] Among various proposals Congress has considered is the recommendation of the American Bar Association Public Contract Law Section that the Act be amended to permit federal agencies to waive the Government license rights and march-in requirements when waiver is in the best interest of the Federal Government.[fn28] What if any effect current antiterrorism and homeland security legislative initiatives will have on the Government's patent policy as expressed in the Bayh-Dole Act remains to be seen.

Summary

The Bayh-Dole Act has helped the Government and private parties through the transition from the era when the Government funded the vast majority of U.S. research and development to the situation today where it funds less than 15%. Now, many products are developed and offered for both Government and commercial use. Congress and the federal agencies are currently examining the way research and development and intellectual property are handled to see if another step is needed to bring commercial technology into the Government's portfolio of tools to solve its new challenges. The Bayh-Dole Act will likely be a central element of that analysis.

Authorization & Consent

Background

A key statutory element of the Government's patent policy, 28 U.S.C. � 1498 has been construed as a compulsory licensing provision in the nature of eminent domain. It permits the Government or another party acting on its behalf to use any U.S. patent--even without the patentee's consent--and limits the patentee's remedy for infringement to a suit against the United States in the U.S. Court of Federal Claims for a reasonable royalty. In Government contracts, the statute is implemented through inclusion of an "Authorization and Consent" clause, which generally provides that the Government gives its authorization and consent to the contractor to use any invention covered by a U.S. patent in the performance of the contract.[fn29]

Historical Development

Before the Court of Claims was formed in 1855, patent infringement claims against the United States were handled by individual private bills before Congress. In 1888, when the U.S. Supreme Court decided United States v. Palmer,[fn30] the Government argued that the Court of Claims had no jurisdiction over this patent infringement action against the United States because (1) patent infringement sounded in tort and at the time the United States could not be sued in tort, and (2) the Court of Claims had no jurisdiction over a defense to patent infringement attacking the validity of a patent because in those cases, the courts of appeals had exclusive jurisdiction. Suits against the United States in the Court of Claims were required to be grounded in contract. A reading of this and other early cases leaves the impression that the courts at that time endeavored to characterize these patent infringement cases involving the United States as contract cases to permit the Court of Claims to take jurisdiction.

In Palmer, the Court affirmed the decision to award a reasonable royalty to the inventor for the Army's use of his patent in "infantry equipments," relying on the findings of the court below that a contract existed.[fn31] Although the Court had previously found that the United States could be sued under an implied contract for taking of land,[fn32] it declined to decide whether a patentee could "waive an infringement of his patent by the government, and sue upon an implied contract."[fn33]

In its analysis in Palmer, the Court found its observations in an earlier case particularly pertinent to the issue, and the passage it quoted is just as relevant today: [fn34]

That the government of the United States, when it grants letters-patent for a new invention or discovery in the arts, confers upon the patentee an exclusive property in the patented invention which cannot be appropriated or used by the government itself, without just compensation, any more than it can appropriate or use without compensation land which has been patented to a private purchaser, we have no doubt. The Constitution gives to Congress power "to promote the progress of science and useful arts by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries," which could not be effective if the government had a reserved right to publish such writings or to use such inventions without the consent of the owner. Many inventions relate to subjects which can only be properly used by the government, such as explosive shells, rams and submarine batteries to be attached to armed vessels. If it could use such inventions without compensation, the inventors could get no return at all for their discoveries and experiments. It has been the general practice, when inventions have been made which are desirable for government use either for the government to purchase them from the inventors, and use them as secrets of the proper department; or, if a patent is granted, to pay the patentee a fair compensation for their use. The United States has no such prerogative as that which is claimed by the sovereigns of England, by which it can reserve to itself, either expressly or by implication, a superior dominion and use in that which it grants by letters-patent to those who entitle themselves to such grants. The government of the United States, as well as the citizen, is subject to the Constitution; and when it grants a patent the grantee is entitled to it as a matter of right, and does not receive it, as was originally supposed to be the case in England, as a matter of grace and favor.
In that prior 1881 case, the Supreme Court had noted that at that time there was no specific statutory provision for compensation by the United States for use of an invention where there was no consent of the patentee or contract, but that the most proper forum for such a claim would be the Court of Claims.[fn35] What is now 28 U.S.C. � 1498 was adopted originally in 1910.[fn36] The 1910 statute made it clear that a patentee had authority to sue the United States in the Court of Claims to recover compensation where his patents were used by the United States without his consent, even when the patentee had no contract with the Government, express or implied, clearing up the question raised by the Supreme Court in United States v. Palmer.[fn37]

The next development arose when the Supreme Court decided Cramp & Sons v. International Curtis Marine Turbine Co.[fn38] on March 4, 1918. In that case, the Court held that the 1910 statute did not prevent a Government contractor from being sued for infringement and that the Government contractor's continued infringement by performing the Government contract could be enjoined. Six weeks later, on April 20, 1918, the Acting Secretary of the Navy wrote a letter to the Chairman of the Committee on Naval Affairs of the Senate referring to Cramp and requesting an amendment to the statute to prevent injunctions against contractors. He stated:[fn39]

Now, however, manufacturers are exposed to expensive litigation, involving the possibilities of prohibitive injunction, payment of royalties, rending of accounts, and payment of punitive damages, and they are reluctant to take contracts that may bring such severe consequences. The situation promises serious disadvantage to the public interests, and in order that vital activities of this department may not be restricted unduly at this time, and also with a view of enabling dissatisfied patentees to obtain just and adequate compensation in all cases conformable to the declared purpose of said act, I have the honor to request that the act be amended by the insertion of a proper provision therefor in the pending naval appropriation bill.
With incredible speed, on July 1, 1918, the act was amended.[fn40] The amendment provided that the patentees' sole remedy, when the United States or one of its contractors infringes its patent, is a suit against the United States in the Court of Claims.[fn41]

In a 1928 decision the Supreme Court analyzed the 1918 amendment and concluded that Government contractors were made immune from liability for infringement:[fn42]

The purpose of the amendment was to relieve the contractor entirely from liability of every kind for the infringement of patents in manufacturing anything for the Government and to limit the owner of the patent and his assigns and all claiming through or under him to suit against the United States in the Court of Claims for the recovery of his reasonable and entire compensation for such use and manufacture. The word "entire" emphasizes the exclusive and comprehensive character of the remedy provided. As the Solicitor General says in his brief with respect to the Act, it is more than a waiver of immunity and effects an assumption of liability by the Government.

28 U.S.C. � 1498 Today

The statute currently in effect states in pertinent part:[fn43]

(a) Whenever an invention described in and covered by a patent of the United States is used or manufactured by or for the United States without license of the owner thereof or lawful right to use or manufacture the same, the owner's remedy shall be by action against the United States in the United States Court of Federal Claims Court for the recovery of his reasonable and entire compensation for such use and manufacture.

* * *

For the purposes of this section, the use or manufacture of an invention described in and covered by a patent of the United States by a contractor, a subcontractor, or any person, firm, or corporation for the Government and with the authorization or consent of the Government shall be construed as use or manufacture for the United States.

The statute is implemented in the FAR through the mandatory "Authorization and Consent" clause for solicitations and contracts:[fn44]
(a) The Government authorizes and consents to all use and manufacture, in performing this contract or any subcontract at any tier, of any invention described in and covered by a United States patent (1) embodied in the structure or composition of any article the delivery of which is accepted by the Government under this contract or (2) used in machinery, tools, or methods whose use necessarily results from compliance by the Contractor or a subcontractor with (i) specifications or written provisions forming a part of this contract or (ii) specific written instructions given by the Contracting Officer directing the manner of performance. The entire liability to the Government for infringement of a patent of the United States shall be determined solely by the provisions of the indemnity clause, if any, included in this contract or any subcontract hereunder (including any lower-tier subcontract), and the Government assumes liability for all other infringement to the extent of the authorization and consent herein above granted.

(b) The Contractor agrees to include, and require inclusion of, this clause, suitably modified to identify the parties, in all subcontracts at any tier for supplies or services (including construction, architect-engineer services, and materials, supplies, models, samples, and design or testing services expected to exceed the simplified acquisition threshold); however, omission of this clause from any subcontract, including those at or below the simplified acquisition threshold, does not affect this authorization and consent.

In research and development contracts, the following is substituted for paragraph (a) of the above clause:[fn45]
(a) The Government authorizes and consents to all use and manufacture of any invention described in and covered by a United States patent in the performance of this contract or any subcontract at any tier.

Application Of the Statute

Issues involving the "Authorization and Consent" clause and 28 U.S.C. � 1498 may arise in several forms and forums, as indicated in the examples below:

(a) Protests--A contractor may file a protest at the General Accounting Office or the Court of Federal Claims to a sole-source award announcement where the Federal Government's justification for the sole source is that the existence of limited rights in data, patent rights, copyrights, or secret processes, the control of basic raw material, or similar circumstances make the supplies and services available from only one source.[fn46]

(b) Infringement Actions--A contractor may file an infringement action at the U.S. Court of Federal Claims because the United States or a third party (usually a competing contractor) is infringing upon its invention.[fn47]

(c) Administrative Claims--A contractor may file an administrative claim with the CO requesting compensation by the department or agency having authority to settle the claim. During the pendency of the administrative claim, the six-year statute of limitations on initiation of suit in the Court of Federal Claims is tolled.[fn48]

Summary

The key developments in the area of "authorization and consent" took place when the United States was either contemplating or engaged in war decades ago. The principles have endured over time, although they have been criticized on several grounds. The statutory policy and its implementation give Government contractors a license to invoke the Government's eminent domain rights to use other contractors' patented inventions, and some contractors are concerned that the purpose may be in self-interest and not purely to benefit the public. In addition, a reasonable royalty cannot compensate for the loss of a first-to-market advantage, market share, and dilution of the value of the intellectual property that can only be protected against by injunctive relief and damages beyond award of a reasonable royalty.

Tenable alternatives that will satisfy the needs of all parties, however, are difficult. In a hearing held on July 17, 2001, a representative from the small business community presented a proposal that agencies "provide a non-judicial source of redress for intellectual property disputes for both large and small businesses."[fn49] He stated that the Court of Federal Claims, the boards of contract appeals, and the federal district courts are tremendously expensive forums for even for one case, for any business, large or small. He suggested that a single forum within each agency, in which informed, skilled, and knowledgeable agency personnel resolve intellectual property disputes fairly and quickly, would be a tremendous service. Contract Disputes Act claims have been the focus of alternative dispute resolution efforts by most federal agencies within the Government contract arena.[fn50] Whether the cost and volume of intellectual property disputes with the Government can justify separate ADR treatment is a question that may deserve the attention of policymakers.

Guidelines

These Guidelines are intended to assist you in understanding the principles of the Government's patent policy embodied in the Bayh-Dole Act's allocation of rights in subject inventions developed in the course of funding agreements and in "authorization and consent" under 28 U.S.C. � 1498. They are not, however, a substitute for professional representation in any particular situation.

  1. Remember that the Bayh-Dole Act applies not only to small businesses and nonprofit organizations but also, under a presidential memorandum, to any private party to a funding agreement.
  2. Bear in mind that the Bayh-Dole Act's coverage extends to all "funding agreements"-- including contracts, grants, and cooperative agreements--for research and development. Recognize that the prevailing view is that it does not apply to the DOD's so-called "other transactions."
  3. Be aware that because the Act defines invention as "any invention or discovery which is or may be patentable or otherwise protectable," the statutory scheme applies not just to patents but to technology you intended to protect by keeping it a trade secret.
  4. Keep in mind that a "subject invention" to which the Government retains a license under the Act is any invention "conceived or first actually reduced to practice in the performance of work under a funding agreement." Thus, the Government has license rights (a) where a technology is conceived and developed at private expense, but the private party takes Government funding to simulate or demonstrate the technology in its first actual reduction to practice, (b) where an invention is conceived while a private party is performing under Government funding, but all development and reduction to practice is accomplished at private expense, and (c) in situations falling between these extremes.
  5. Recognize that while the Bayh-Dole Act allows the private party to retain title to any invention developed in the course of a funding agreement, the Government receives a "nonexclusive, nontransferable, irrevocable, paid-up license to practice or have practiced for or on behalf of the United States any subject invention throughout the world. Thus, the Government may allow a third-party to practice--royalty-free--any subject invention on its behalf.
  6. Keep in mind that if you have a procurement contract governed by the FAR, you must disclose a subject invention to the Contracting Officer within (a) two months after the inventor discloses it in writing to contractor personnel responsible for patent matters or (b) six months after you become aware that a subject invention has been made, whichever is earlier. The Government may seize title to the invention if notification is not made.
  7. Consider that compliance with the Bayh-Dole Act's requirement that the private party to funding agreement obtain agreements from potential licensees that any products embodying or produced through the use of a subject invention will be manufactured substantially in the United States may be difficult in a global economy.
  8. Bear in mind that although the Federal Government apparently has never exercised its march-in rights, there may be situations in which the Government used the threat of exercising march-in rights to obtain other concessions from a private party to a funding agreement during the course of negotiations.
  9. Remember that 28 U.S.C. � 1498 permits the Government or another party acting on its behalf to use any U.S. patent--even without the patentee's consent. The patent owner's only remedy for infringement is a suit against the United States in the U.S. Court of Federal Claims for a reasonable royalty.
  10. Be aware that Government contracts and solicitations will contain an "Authorization and Consent" clause providing that the Government gives its authorization and consent to the contractor to use any invention covered by a U.S. patent in the performance of the contract.
  11. Keep informed about any legislative or regulatory developments that may affect the Government's patent policy.

 



Footnotes:

1: U.S. Const. amend V.

2: See Office of the Under Secretary of Defense for Acquisition, Technology and Logistics, "Intellectual Property: Navigating Through Commercial Waters," Rev. 1.1, October 2001 (advising DoD acquisition professionals to "seek flexible and creative solutions to IP issues, focusing on acquiring only those deliverables and license rights necessary to accomplish the acquisition strategy.") See generally Holly Emrick Svetz, "Negotiation and Flexibility: DOD's Intellectual Property Guide Provides Core Principles and Practical Solutions," 36 Proc. Law. 9 (Summer 2001).

3: Pub. L. No. 96-517, 94 Stat. 3015 (codified as amended at 35 U.S.C. �� 200–211, 301–307).

4: U.S. Const. art. I, � 8, cl. 8.

5: See generally Carl L. Vacketta, Donald G. Featherstun, Mary E. Shallman & John W. Rakow, "Technology Transfer," Briefing Papers No. 94-12 (Nov. 1994) (Carl L. Vacketta & Holly Emrick Svetz, 1997 Revision Note).

6: 35 U.S.C. � 200.

7: 35 U.S.C. � 202.

8: President's Memorandum to the Heads of the Executive Departments and Agencies, Government Patent Policy (Feb. 18, 1983); see also Exec. Order No. 12,591, � 1(b)(4), 52 Fed. Reg. 13,414 (Apr. 10, 1987).

9: 35 U.S.C. � 201(e).

10: 35 U.S.C. � 201(b).

11: See Memorandum from Under Secretary of Defense for Acquisition and Technology Paul G. Kaminski to Secretaries of the Military Departments and Directors of Defense Agencies, "10 U.S.C. 2371, � 845," (Dec. 14, 1996); Department of Defense "Other Transactions": An Analysis of Applicable Laws (American Bar Ass'n Monograph, 2000); see also 10 U.S.C. � 2371 & note. See generally Holly Emrick Svetz, "Feature Comment: DOD's Guide for Prototype Other Transactions--Walking the Line Between Flexibility and Accountability," 43 GC 75 (Feb. 21, 2001); Carl L. Vacketta, Richard N. Kuyath & Holly Emrick Svetz, "Other Transactions," Briefing Papers No. 98-4 (Mar. 1998).

12: 35 U.S.C. � 201(d) (emphasis added).

13: 35 U.S.C. � 201(e) (emphasis added).

14: 35 U.S.C. � 202(c)(4).

15: See 35 U.S.C. � 202(c)(4).

16: See 35 U.S.C. � 202(c)(4).

17: 35 U.S.C. � 202(c)(1).

18: See FAR subpt. 27.3.

19: FAR 52.227-12, para. (c).

20: FAR 52.227, paras. (d)(2) and (e).

21: 35 U.S.C. � 204.

22: 35 U.S.C. � 203.

23: 35 U.S.C. � 203(1)(a).

24: 35 U.S.C. � 203(1)(b).

25: 35 U.S.C. � 203(1)(c).

26: 35 U.S.C. � 203(1)(d).

27: See 77 Fed. Cont. Rep. (BNA) 560 (May, 14, 2002); 43 GC 286(c);

28: For additional reading on the need to amend the Bayh-Dole Act, see Diane M. Sidebottom, "Updating the Bayh-Dole Act: Keeping the Federal Government on the Cutting Edge," 30 Pub. Cont. L.J. 225 (Winter 2001); Richard N. Kuyath, Barriers to Federal Procurement: Patent Rights, 36 Procurement Lawyer 1 (2000); see also Ralph C. Nash, "Postscript: Intellectual Property Rights With Commercial Companies," 16 Nash & Cibinic Rep. 41 (Aug. 2002).

29: See FAR 52.227-1.

30: 128 U.S. 262 (1888) (Palmer, the inventor, had made improvements in "infantry equipments," composed of braces, knapsack, haversack, and cartridge-box, and the Army purchased about 13,500 of these equipments. The patentee sought $10,125, claiming that the cost of manufacturing the equipments was $5.59 each and the royalty was $0.75 each. The court allowed $0.25 each as a reasonable royalty on a quantity of 9,027 sets for the sum of $2,256.75).

31: 128 U.S. at 272.

32: See United States v. Great Falls Mfg. Co., 112 U.S. 645 (1884) (affirming judgment in favor of plaintiff, granting compensation for implied contract for the Government's use of land and water rights to provide water to the cities of Georgetown and Washington); United States v. Alexander, 148 U.S. 186 (1893) (affirming judgment in favor of plaintiff, granting compensation for destruction of water well during construction of the Washington aqueduct).

33: 128 U.S. at 272.

34: Id. at 271 (quoting James v. Campbell, 104 U.S. 356, 357–58 (1881).

35: Id. at 358 (reversing and remanding with directions to dismiss the complaint for patent infringement on a reissue patent on other grounds and finding there was no infringement by the United States Postmaster for New York on a device that simultaneously postmarked letters and cancelled postage stamps).

36: Act of June 25, 1910, ch. 423, 36 Stat. 851, 853 (current version at 28 U.S.C. � 1498).

37: Crozier v. Krupp, 224 U.S. 290, 302 (1911) (reversing and dismissing complaint by German corporation seeking injunctive relief against the Chief of the Ordnance of the U.S. Army for infringing patents for field guns, a recoil-brake apparatus, and gun carriages by having this equipment manufactured at U.S. arsenals, without prejudice and holding that an infringement claim may not be maintained against the Ordnance Officer personally, but that the 1910 statute "provides additional protection for owners of patents of the United States").

38: 246 U.S. 28 (1918) (affirming judgment that Cramp, in building torpedo boat destroyers under a Government contract, infringed on the patent of International Curtis Marine Turbine Co. and that the Government's license to use the patent under the 1910 Act did not cover its contractors).

39: Richmond Screw Anchor Co. v. United States, 275 U.S. 331, 342–43 (1928) (reversing decision below to dismiss the case on grounds that assignment of contractor's infringement claims to the Government was prohibited and instead remanded for further findings to show how many of the patented cargo beams were made by Government contractors and what would have been a reasonable royalty).

40: Act of July 1, 1918, ch. 114, 40 Stat. 705 (current version at 28 U.S.C. � 1498). Note that in the spring of 1918, Germans released from the Eastern Front launched a major offensive on the Western Front. The Allies launched major counter-offensives at the Marne and Amiens in early summer, freeing much of occupied France and Belgium.

41: Federal Courts Improvement Act of 1982, Pub.L. 97-164, 96 Stat. 25, provided that a patentee's sole remedy lies in a suit against the United States in the Claims Court.

42: 275 U.S. at 343–44.

43: 28 U.S.C. 1498(a) (emphasis added).

44: FAR 52.227-1; see also FAR 27.201-2.

45: FAR 52.227-1, alt. I; see also FAR 27.201-2.

46: FAR 6.302-1(b)(2), see, e.g., Federal Computer Int'l Corp., Comp. Gen. Dec B-251132, 93-1 CPD 175 (denying protest where agency's written justification and approval for the proposed sole-source award complied with the procedural requirements of the Competition in Contracting Act by stating the requirements for printer maintenance services could only be satisfied by Xerox because of the proprietary nature of the Xerox diagnostics, manuals, maintenance routines, software revisions, updates, modules, enhancements, and source code); Marconi Dynamics, Inc., Comp. Gen. Dec B-252319, 93-1 CPD 475 (sustaining protest where agency's written justification and approval for the proposed award of a sole-source, follow-on contract for weapon system support for air-launched guided weapons was not reasonably based because its claims that the unavailability of proprietary data and of certain equipment and facilities were effectively refuted by the protester); Virginia Panel Corp., Comp. Gen. Dec B-247825, 91-2 CPD 515 (holding that GAO would not consider protester's contention that production of an acceptable part would necessitate infringement of its patent for interface test adapter assemblies because patent holders have adequate and effective remedies for such infringement, which save the Government from having its procurements delayed pending litigation of such disputes); Colt Indus., Inc., Comp. Gen. Dec B-235591, 89-1 CPD 519 (dismissing protest of request for proposals where protester alleged that only Colt possessed rights to use the M16 series technical data since the Government breached the license agreement for the data; GAO held that even where protester claims that its proprietary position makes it the only firm qualified to do the work, the GAO does not generally consider it appropriate to review a protest that an agency should procure an item on a sole-source basis rather than compete); Motorola, Inc. v. United States, 13 Cl. Ct. 420 (1987) (holding that including the "Authorization and Consent" clause in an RFP was not intended as a scheme to deceive Motorola into not recognizing infringement on its transponder patent); Herbert Cooper, Comp. Gen. B-136916 (Aug. 25, 1958) (unpublished), and 38 Comp. Gen 276, 1958 CPD 98 (1958) (requiring award in a sealed-bid procurement for tube assemblies to connect oxygen masks with oxygen regulators to the lowest bidder, regardless of possible patent infringement because it would be improper to reject all bids and negotiate with the patent holders or licensees to obviate patent infringement).

47: See, e.g., TVI Energy Corp. v. Blane, 806 F.2d 1057 (Fed. Cir. 1986) (affirming district court's dismissal of patent infringement case for lack of jurisdiction, saying that appellant's sole remedy would lie, if at all, in the U.S. Claims Court since authorization and consent covered bidding activities as well as awarded Government contracts in a case where competitor Blane and TVI were both bidding on an Army contract for thermal targets and at a pre-award demonstration TVI concluded that Blane's targets infringed its patent); Dynamics Corp. of Am. v. United States, 5 Cl. Ct. 591 (1984) (awarding $11,529,195 for infringement of patent for method and apparatus for checking electronic analog computers by multiple departments and agencies of the United States and several of their contractors); Bendix Corp. v. United States, 676 F.2d 606 (Ct. Cl. 1982) (awarding $16,261,995 plus delay compensation of $2,572 per day for infringement of valid patent for fuel control systems for jet engines by the United States and by Woodward Corp. and General Electric Company on its behalf); Hughes Aircraft v. United States, 534 F.2d 889 (Ct. Cl. 1976) (holding Hughes' claim of patent infringement was covered by the "Authorization and Consent" clause and should be heard by the Claims Court where infringement was alleged to be by the British Ministry of Defence and its subcontractors, where the United States and United Kingdom governments had a memorandum of understanding regarding the Skynet II satellite communication program, and affecting separate actions in district court claiming patent infringement against Philco-Ford and Marconi that had been stayed pending the determination on the jurisdictional issue in the Court of Claims).

48: 35 U.S.C. � 286; see, e.g., Dynamics Corp. of Am. v. United States, 5 Cl. Ct. 591 (1984) (Dynamics Corp. filed administrative claims with 13 departments and agencies for infringement of its patent for the method and apparatus for checking electronic analog computers that were either settled or pending for seven months before a petition was filed at the Claims Court); Bendix Corp. v. United States, 676 F.2d 606 (Ct. Cl. 1982) (Bendix filed an administrative claim with the Air Force for the infringement by Woodward Governor Co. and General Electric Co. of its patent for the main fuel control system for the J-79 gas turbine jet engine, but the administrative claim was denied on April 29, 1970, after the expiration of the patent).

49: "Toward Greater Public-Private Collaboration in Research & Development: How the Treatment of Intellectual Property Rights Is Minimizing Innovation in the Federal Government: Hearing Before the Subcomm. on Technology and Procurement Policy of the House Comm. on Government Reform, 106th Cong. 2d Sess. (2001) (statement of Richard Carroll, Chairman of The Small Business Technology Coalition and Chief Executive Officer, Digital System Resources, Inc.)

50: See 41 U.S.C. �� 601–613. See generally Carol Park Conroy & Martin J. Harty, "Alternative Dispute Resolution at the ASBCA," Briefing Papers No. 00-7 (June 2000).

 


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