John DeStefano

Pentagon

Intellectual Property Rights and Federally Funded Research

Under typical Phase 1 contracts with the Department of Defense (DoD), such as the Air Force Research Lab (AFRL), default ownership of domestic and international intellectual property rights belong to the Contractor. However, if the Contractor fails to report any inventions to the contracting officer within two months of preparing the corresponding patent applications, the Contractor risks losing ownership of those inventions.

Washington D.C.

Federal Contracting; Contractor Disclosure to Funding Agencies and Agency March-in Rights

Funding agencies have taken a very narrow approach when interpreting the four categories listed above from 35 U.S.C. § 203. Accordingly, contractors should understand how march-in rights function in theory, but it is historically unlikely to assume an agency would exercise this power without further legislation. Ultimately, contractors should focus on furthering their research and ensuring proper disclosure practices to their funding agencies, as it is historically unlikely that a funding agency will exercise their march-in rights and compel contractors to license any of their subject inventions.

Business & Corporate

International Patents: Grace Periods after Public Disclosures

Once a public disclosure is made, the public disclosure bars the filing of a patent application in almost all jurisdictions. However, in the United States, there is a 12 month grace period starting from the public disclosure to file a patent application. A patent filing in the US does not count as prior art if we make a US filing before a public disclosure. Therefore, we have two routes to file applications in other countries.

Restoring the America Invents Act

Unleashing American Innovators Act of 2021 – Diversifying the Patent System

On September 21, 2021, Senators Patrick Leahy and Thomas Tillis introduced the Unleashing American Innovators Act of 2021. According to Leahy’s official press release, the proposed bill “requires the Patent Office’s satellite offices to conduct outreach to increase participation in the patent system by women, people of color, military veterans, individual inventors, and other groups that are underrepresented in the system.”