The Government Contract Intellectual Property Institute

A comprehensive course for Contractors and Agencies.

Maximizing & Preserving the Value of your Intellectual Property

Basic Intellectual Property Assets
Commercialization of Government-Owned Technologies
Cooperative Agreements, CRADA's and Other Transactions
Rights in Technical Data and Computer Software

We live in a global, knowledge-driven economy where our ideas, knowledge, thoughts, creativity, and innovation provide us with competitive advantages in the marketplace. Our intellectual property (IP) assets (what we know, what we've learned, what we've created, and how we apply our expertise) distinguish us and our products, services and processes. Our IP assets are valuable and we must protect them.

The purpose of this course is to examine IP rights under government contracts and issues facing Government Contractors and Government Agencies, focusing on the identification of IP assets and the preservation and assertion of one's rights in those assets.

The course starts with an overview of basic patent, copyright, trademark, and trade secret issues and their implications in Government Contracting. It then covers technical data rights and computer software issues; Cooperative agreements, CRADAs, and other transactions; technology transfer and the commercialization of government-owned technologies; and emerging issues in the Government Contracts/IP environment.

The course will be presented by an exceptional course faculty. They are experienced practitioners in both commercial methods of intellectual property protection and the unique issues arising in the Government Contracting environment. As outsourcing and commercialization blur the traditional distinctions between public and private enterprise and entrepreneurship, safeguarding IP assets is critically important to both contractors and the Government.

Although we do not presume to have all of the answers in this complex arena, we do intend to provide you with insight, guidance and resources to assist you to maximize and protect the value of your IP assets.

We look forward to your participation.

The Government Contract Intellectual Property Institute Course Curriculum

Overview & Update
Defining Rights In Intellectual Property Under Government Procurement Contracts
1. Patent Rights
  1. Principles of Patent Law
  2. Types of Patents
2. Bayh-Dole Act and Implementing Executive Orders
  1. Background Inventions
  2. Subject Inventions
3. Copyrights
  1. Principles of Copyright Law
  2. Government Works
  3. Exclusive Rights vs. Limitation on Rights
  4. Copyrights Under Government Contracts
4. Trademarks
  1. Principles of Trademark Law
  2. Recent Developments in Trademarking Government Terms and Nomenclatures
  3. Considerations Arising From E-Commerce
5. Trade Secrets
  1. Principles of Trade Secrets
  2. The Trade Secrets and Economic Espionage Acts
  3. Teaming and Nondisclosure Agreements
Rights in Technical Data and Computer Software Under Government Procurement Contracts
1. Technical Data and Computer Software Defined
2. Regulatory Revisions and Frameworks
3. Unlimited Rights
4. Limited Rights in Technical Data
5. Restricted Rights in Computer Software
6. Government Purpose License Rights and Government Purpose Rights
7. Non-Standard Rights
8. Copyrights
Protecting Your Investment - Software Escrow
1. Definition and Types of Software Escrow Agreements
2. Benefits and Concerns
  1. Government Agency
  2. Prime Contractor
  3. Developer/Licensor
3. Aspects of Software Escrow Agreements
  1. Deposit Materials List
  2. Release Criteria
  3. Technical Verification
4. Common Pitfalls
Intellectual Property Rights Under Non-Traditional Instruments (Cooperative Agreements, CRADAs, and Other Transactions)
1. Definitions and Uses
2. Negotiation of Intellectual Property Rights
  1. Specific Statutory Requirements
  2. Agency Policies and "Going-in" Positions
3. Marketing Considerations
Enforcing Intellectual Property Rights Under Government Contracts
1. Claims Against the United States Government for Infringement or Misappropriation of Intellectual Property
2. Authorization and Consent
3. March-In Rights
Maximizing and Preserving the Value of Intellectual Property in Government Contracts, Cooperative Agreements, Other Transactions and Other Non-Traditional Instruments
1. Developing a Strategic Intellectual Property Plan
2. IP Audits
  1. Conducting a Self-Audit
  2. Evaluating Your Own Processes
Emerging Intellectual Property Issues
1. Homeland Security
2. Open Source Software
3. Current Regulatory Developments

Course Faculty

Thomas J. Madden
Partner in the Washington, D.C. law offices of Venable, LLP, where he assists clients in all aspects of government contract and related intellectual property law • Registered to practice before the United States Patent and Trademark Office • Former Patent Examiner; Patent Attorney, U.S. Navy • Author of numerous publications in the Government Contracts area • J.D., with honors, Catholic University of America, Columbus School of Law; Bachelor’s degree in Electrical Engineering, Villanova University • Member, American Intellectual Property Law Association; Past Chair and Fellow, American Bar Association, Section of Public Contract Law; Past President, United States Court of Federal Claims Bar Association; Life-Fellow, American Bar Association; served as Professional Lecturer in Government Contracts Program at George Washington University Law School.

Charles R. "Rod" Marvin, Jr.
Partner in the Washington, D.C. law offices of Dykema Gossett PLLC, where he advises and represents clients with respect to issues arising throughout the government procurement process — from solicitation and award through contract administration and claims, to contract completion or termination. Mr. Marvin’s experience spans a wide range of areas, including information systems and technology, military weapons and weapons simulations systems (including classified projects), space-related systems and support systems, geotechnical construction, healthcare services, research and development contracts, and environmental remediation work. Mr. Marvin advises and represents clients in the evaluation of solicitation provisions and in the preparation and negotiation of contract provisions, including, in both cases, provisions concerning the creation, protection, and licensing of intellectual property, as well as teaming agreements, confidentiality agreements, protective orders, and mediation and settlement agreements. J.D., Boston University School of Law, LL.M. with highest honors, (Government Procurement Law), The George Washington University Law School, B.A. with honors, Michigan State University.

Henry J. Daley, PhD
Partner in the Washington, DC law offices of Venable, LLP, where he counsels companies from startups to multinational corporations, universities, and research organizations on all aspects of intellectual property law and strategies. Dr. Daley is currently developing and managing patent portfolios for major multinational corporations, universities and research institutes in the semiconductor, nanotechnology, photonics, optical device, imaging system and medical device fields. he has counseled the world’s largest producer of photolithography systems, the largest maker of endoscopes and microscopes and one of the largest camera and imaging companies. He has worked with several startup companies related to photonics components, lasers, micro-electromechanical systems (MEMS), lab-on-a-chip devices, nanotechnology devices, optical communications systems, and wireless systems. B.S., physics, with honors, WPI; PhD, physics, University of Arizona; JD, Northeastern University. Registered to practice before the United States Patent and Trademark Office. Conducted research as a PhD staff member at MIT, Lincoln Laboratory on programs funded by DARPA and the U.S. Air Force. Conducted research at Daresbury Laboratory in England, at The Wright Nuclear Structure Laboratory, Yale University, and at the KVI nuclear physics laboratory in the Netherlands.