1. Intellectual Property (IP) and Technical Data#1
’02 ’06
’05 ’06 ’07
’04 ’06 ’07 ’09
’03 ’04

2. Lesson Objectives
Assess and evaluate the technical capabilities of your customer/partner
Contrast the differences between patents, trademarks, and trade secrets in relation to DoD international programs
Analyze the intricacies of foreign patent laws, as well as copyright and trademark treaties
Infer the correct application of technical data rights

3. Types of IP Protection Patents and Copyrights Trademarks Trade Secrets
Protect ownership rights in products created through intellectual effort (inventions, writings)
Trademarks
Protect business goodwill embodied in marks used “in commerce” to identify source
Trade Secrets
Protect guarded information which, if publicly disclosed, would cause the owner economic harm

4. How Are IP Rights Created or Recognized?
Federal Statute
Ex: Patents, Copyrights, Trademarks (R)
State Statute or Common (Case) Law
Ex: Trademarks (TM), Trade Secrets
International Agreement
Ex: Berne Convention (Copyright)

5. Balancing of Interests
IP Laws Balance…
Private owner’s right to enjoy exclusive economic benefits
Public’s interest in technological advancement and right to information
Impact of IP Protection…
Too little: No incentive to innovate/create?
Too much: No “prior art” to inspire new works?

6. Patents U.S. Patent - Title 35 of the U.S. Code
Grants right to exclude others from making, using, or selling in U.S. for 20 years
Must disclose specifications and drawings that make it obvious how to build the item
Government has rights in invention(s) conceived and/or reduced to practice using government funding
Government receives a nonexclusive, royalty-free, worldwide license to practice invention
Contractor must disclose invention & elect whether to retain title

7. Foreign Patent Laws U.S. patents only protect within U.S.!
In most foreign countries…
Publication before application bars right to patent
Maintenance fees are required
Invention must be manufactured in-country within certain period after patent (3 years)
Invention may be subject to grant of compulsory license to anyone who applies for a license

8. Patent Treaties Paris Convention Patent Cooperation Treaty
168 countries, including U.S.
Affords citizens of member countries the same patent/trademark rights as each country grants its own citizens
“Priority rights” for patents and trademarks
Patent Cooperation Treaty
124 countries, including U.S.
Centralized filing procedures
Standardized application format

9. Copyright Copyright rights automatically attach upon completion
Provides owner the right to control duplication, distribution, use, & modification of the work
Permission is required from the copyright owner
Marking provides notice of this right
Includes ©, owner name, and year completed
Owner has an absolute right to include a © marking
BUT, Government – by FAR and DFARS – has license rights in any copyrighted material that is brought into a government contract or that is developed using government funding

10. Copyright Treaties Berne Convention
90 countries, including U.S.
No copyright notice required for protection
Trade-Related Aspects of Intellectual Property Rights under General Agreement on Tariffs & Trade (GATT)
Universal Copyright Convention (UCC)
© symbol must be used
All apply “National Treatment” principle

11. Trademarks
Word, name, symbol, smell, sound or device used in commerce as a brand name
Identifies and distinguishes goods of one manufacturer or seller from others
Ex: Kleenex (trademark), Roto-Rooter (service mark)
Right to exclude others from using a confusingly similar mark or name

12. Trademark Treaties Paris Convention
Trade-Related Aspects of Intellectual Property Rights Agreement
Part of the General Agreement on Tariffs and Trade (GATT)
Madrid Protocol

13. Trade Secrets Information of almost any type in almost any form which:
the owner has taken reasonable measures to keep secret; and
derives independent economic value from not being generally known to, or reasonably ascertainable by, the public
Protection:
Physically safeguard
Always mark as Proprietary Information – Not for Public Release
Never disclose without a nondisclosure agreement

14. Trade Secret Crimes 18 U.S.C. 1831, 1832, & 1905
Up to 1 year imprisonment, $1000 fine, and removal
from office for unlawful release of trade secrets,
processes, operations, apparatus or other
proprietary information
Up to 10 years imprisonment and $5M (corporate)
fine for knowingly stealing/receiving trade secrets
with “intent to convert” for the economic
advantage of someone other than owner
If benefactor is a foreign government and/or
industry, then it is 15 years imprisonment
and $10M fine

15. Technical Data
Recorded data of a technical or scientific nature regardless of form
Examples: research data, engineering data, repair manuals, operating manuals, installation instructions, inspection and testing data
DFARS governs Govt. rights in noncommercial tech data delivered under DoD contracts
Combination of copyright and trade secret law

16. Technical Data Rights “Follow the Funds”
UNLIMITED RIGHTS: Government funded
- License to use for any purpose by Government
LIMITED/RESTRICTED RIGHTS: Contractor funded
- License to use for contract purposes only
No disclosure outside of Government
Limited Rights for tech data; Restricted Rights for S/W
GOVERNMENT PURPOSE RIGHTS: Partially Government funded
License to use for Government purposes
Includes future procurements and FMS
No commercial disclosure or use

17. Technical Data Rights
Contractor must identify technical data to be delivered with other than Unlimited Rights in its proposal
May be updated after award
Must deliver with Unlimited Rights if not listed
Must mark with DFARS legend
No protection if not properly marked

18. Proprietary Rights Everything is “proprietary” today!!
In the private arena, proprietary information derives value from not being known outside the company
Others can derive value from improper disclosure/use
Includes any closely held information and some public information
Technical data, software docs, manuals, formulas, business data, patents, copyrights, licenses, trade secrets, IRAD technology
Information is controlled by a company to safeguard its competitive edge

19. Proprietary Rights (cont.)
Physical protection
Training, access, and marking
Contractual protection
Confidentiality, non-disclosure, non-competition, etc.
Everything gets marked “proprietary”
Government/DFARS does distinguish IP from other types of business/confidential information
Requires different markings for each
Technical data is IP, not “proprietary”
Hence, the problem!
Bottom Line – “push back’ on “proprietary”!

20. Rely on IP Legal Counsel!!
IP rights may be protected by patents, trademarks, copyrights, as trade secrets, etc.
IP rights may be governed by Federal law, State law, common law, or even foreign treaty
IP rights may be conveyed to the Government, by Federal data rights clauses, by standard license agreements, by negotiated contract, etc.
IP-related contractual instruments (licenses, data rights clauses, NDAs, etc.) must be drafted by an IP expert