Intellectual Property: Navigating through Commercial Waters

1. Intellectual Property: Navigating through Commercial Waters ABA Seminar on R&D Commercial Practices and Government Contracts 22 April 2002

2. Government Concern

3. Basic Government/IndustryCultural Value Conflict • Industry wants to protect its most valuable commodity—IP, 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

4. Industry IP Concerns • Government requires too much data and demands excessive rights • Government doesn’t properly protect industry’s data from competitors • Regulations are too complex, difficult to understand, and do not reflect business realities • Trade secret protection issue

5. Industry IP Concerns (Continued) • Regulations do not ensure subcontractor rights are protected • Acquisition community doesn’t feel empowered to move from historical paradigm • Training issue

6. Industry IP Concerns (Continued) • Contracting officers typically don’t understand or take advantage of existing inherent IP flexibility in regulations • Addressed in part by IP guide

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

8. Policy Letters (Continued) • Jan 5, 2001 USD(AT&L) 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

9. Policy Letters (Continued) • Dec 21, 2001 USD(AT&L) 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

10. Intellectual Property:Navigating 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

11. IP Guide Principles 1. Integrate IP considerations fully into acquisition strategies for advanced technologies.

12. 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.

14. 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.

15. 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.

16. Issues Covered by the Guide • Appropriate use of the patents clause • Patent rights clause • Technical data rights • Computer software rights • Other clause issues

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

18. 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!

19. 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

20. 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

21. Next Steps - First Do No Harm!(Continued) • Regulatory initiatives • FAR plain language rewrite ofPart 27 • DFARS case on the treatment of proprietary information

22. Acquisition Initiatives Website Acquisition Initiatives http://www.acq.osd.mil/ar/ Resources – IP Guide http://.www.acq.osd.mil/ar/#intelprop

23. Lt Col Gregory Redick, OSD(AT&L)AI 703/693-7795 gregory.redick@osd.mil http://www.acq.osd.mil/ar/ Karen Sorber, LMI 703/917-7219 ksorber@lmi.org John Ablard, LMI 703/917-7243 jablard@lmi.org Points of Contact