How Do I Own My Inventions Under the SBIR/STTR Program?

by Burns & Levinson LLP
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The contractor may retain the entire right, title and interest throughout the world of each subject invention. With respect to any subject invention in which the contractor retains title, the Government shall have a nonexclusive, nontransferable, revocable, paid-up license to practice or have practiced for or on behalf of the United States the subject invention throughout the world.

It should be noted within this context, “contractor” may be replaced by “subcontractor” if applicable.

First, the contractor must recognize what a subject invention is. A subject invention under a government contract (includes SBIR/STTR Program) means any invention of the contractor made in the performance of work under the contract (the SBIR/STTR Program); and “made” means, when used in relation to any invention other than a plant variety, the conception or first actual reduction to practice of the invention.

Second:

  1. The inventor must disclose the subject invention to his or her employee (the contractor);
  2. Within two months of receipt of the subject invention disclosure, the contractor must disclose the subject invention to the contract administrator;
  3. Within two years after disclosure to the contract administrator or at least 60 days prior to the end of the statutory bar period, the contractor must elect to take title to the subject invention;
  4. Within one year after election or prior to the end of a statutory bar period, the contractor must file a provisional or nonprovisional patent application in the U.S. Patent and Trademark Office (USPTO) on the elected subject invention; and
  5. Within ten months after the earliest priority filed application or (when applicable) six months from date permission is granted in cases under secrecy order, the contractor files a nonprovisional application (if applicable) and files in additional countries if foreign rights are elected.

Regardless of the above, please make sure to confer with a patent attorney in order to prevent any accidental loss of rights when filing provisional and/or nonprovisional patent applications.

Note that extensions of time may be requested from the contract administrator except for time lines that fall within the statutory bar period.

If the contractor or subcontractor elects to retain title to a subject invention, a few of the important requirements that the contractor must be aware of are as follows:

  1. The contractor or subcontractor must identify publications, offers for sale and public use of the subject invention;
  2. The contractor must, by written agreement, require its employees (other than clerical and/or non-technical employees) to disclose promptly in writing to personnel identified as responsible for the administration of patent matters each subject invention made under the contract in order that the contractor can comply with the appropriate disclosure provisions. The contractor must also execute all papers necessary to file provisional or patent applications on subject inventions and to establish the government’s rights in the subject inventions;
  3. The contractor must notify the contracting officer of a decision not to file a provisional or nonprovisional patent application on the subject invention, not to continue prosecution of a patent application, not to pay a maintenance fee on an issued patent, or defend re-examination or an opposition proceeding on a patent in any country not less than 30 days before expiration of such a response or filing period;
  4. The contractor must execute or have executed and promptly delivered to the contracting federal agency all instruments necessary to establish or confirm the rights the government has throughout the world in those subject inventions to which the contractor elects to retain title;
  5. To convey title to the contracting agency (U.S. Government) if the contractor or subcontractor does not elect to take title or does not fulfill the relevant requirements above, when requested by the government to enable the government to obtain patent protection throughout the world in that subject invention; and
  6. To include in the specification of a provisional or non-provisional application the statement: “This invention was made with Government support under (identify the contract) awarded by (identify the agency). The Government has certain rights in the invention.”

In addition to the above, when dealing with a government contract, the contractor agrees that neither it, nor any assignee, will grant any person exclusive right to use or sell the subject invention unless such person agrees to manufacture substantially in the United States. Since many components cannot be manufactured within the United States it is possible for the contractor to obtain from the government a waiver to such a manufacturing provision.

 

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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