Intellectual Property (2016) On Demand

The Government’s and contractors’ respective rights in intellectual property (IP) in the performance of government contracts is very important to both contracting parties. For contractors, IP rights may be critical business assets. For Government agencies, IP rights may have a significant impact on the life cycle costs to accomplish an agency’s mission. Patent rights and rights in data and software is an unusually complex area, but contractors and the government need to understand these legal and contractual concepts to successfully address their business objectives. This program will provide you with the practical tools to analyze and solve IP issues, including patent, data, and software rights issues, that commonly arise in the government contracts context.

Series Agenda

  • Session 1: Overview, Inventions/Patents, Copyrights, and Trademarks
  • Intellectual Property issues in government contracts can be complex. This webinar introduces participants to the series and covers three major areas in intellectual property law: Patents, Copyrights, and Trademarks. Specifically, it reviews the ways in which these types of intellectual property interact with government contracts. Along the way, we will provide practical pointers for developing, protecting, and using such property while working on government contracts.

    1. Overview of the series
      • Applications and Situations in which this Information will be Useful
    2. Inventions/Patents
      • Overview of General Rules
      • Subject Inventions
      • Government Title to Subject Inventions
      • Remedies
    3. Copyrights
      • Overview of General Rules
      • Government Use Rights
      • Remedies
    4. Trademarks
      • Lack of Specific Regulation
      • Yosemite and how such issues arise
    5. Practical Pointers
  • Session 2: Rights in Non-Commercial Technical Data and Computer Software
  • This webinar provides a detailed overview of data rights in non-commercial technical data and computer software. Specifically, it will discuss key definitions under the FAR, the rights allocation scheme for Technical Data and Computer Software, and how the analysis for contracts with civilian agencies differs from the analysis for contracts with the Department of Defense. We will also provide practical pointers for implementing internal policies to maximize IP protection.

    1. Background & Definitions
      • Technical Data
      • Computer Software
    2. Rights Allocation Scheme for Technical Data and Computer Software
      • Categories of Government License Rights
      • Determining What Rights the Government Receives
    3. Civilian Agencies vs. Department of Defense (DoD)—Different Rules and Contract Clauses
    4. Technical Data and Computer Software under Small Business Innovation Research (SBIR) Program
    5. Practical Pointers
  • Session 3: Commercial Data and Commercial Software
  • The Government’s and contractors’ respective rights in intellectual property (IP) in the performance of government contracts is very important to both contracting parties. For contractors, IP rights may be critical business assets. For Government agencies, IP rights may have a significant impact on the life cycle costs to accomplish an agency’s mission. Patent rights and rights in data and software is an unusually complex area, but contractors and the government need to understand these legal and contractual concepts to successfully address their business objectives. This program will provide you with the practical tools to analyze and solve IP issues, including patent, data, and software rights issues, that commonly arise in the government contracts context.

    1. Brief Review of Standard Data Rights Issues
    2. Commercial Context: Better Buying Power and Silicon Valley Initiatives
    3. Qualification as Commercial Item
      • Difference Between FAR Commercial Item Determination and DFARS
      • Commercial Computer Software Determination
    4. Rights Acquired in Commercial Data
      • Limitations
      • Comparison to Standard Clauses
    5. Rights Acquired in Commercial Software
      • Public License
      • Negotiation of Additional Rights
    6. Practical Pointers
  • Session 4: Intellectual Property Protection, Challenges, and Disputes
  • The Government’s and contractors’ respective rights in intellectual property (IP) in the performance of government contracts is very important to both contracting parties. For contractors, IP rights may be critical business assets. For Government agencies, IP rights may have a significant impact on the life cycle costs to accomplish an agency’s mission. Patent rights and rights in data and software is an unusually complex area, but contractors and the government need to understand these legal and contractual concepts to successfully address their business objectives. This program will provide you with the practical tools to analyze and solve IP issues, including patent, data, and software rights issues, that commonly arise in the government contracts context.

    1. Notice and Marking requirements
    2. Validation of Marking requirements
    3. Government challenge procedures and Contractor response
    4. Practical Pointers to Maximize IP Protection
      • Properly Disclosing Subject Inventions
      • Avoiding “Bad” Clauses
      • Negotiation of Data Right and Impact on Trade Secret Battles
      • NDAs
    5. Disputes
      • Government Misuse of IP
      • Disputes with Third Parties
      • Patent Infringement and 28 U.S.C. §1498(a)
      • Trade Secrets
      • Trademarks
    6. Practical Pointers

Faculty

Steve Masiello

Steven M. Masiello’s practice focuses on client counseling and litigation concerning federal, state and commercial contracts, technology agreements and related regulatory matters. He represents both large and small companies across diverse industries including aerospace and defense, construction and engineering services, information technology, health care, biotechnology, pharmaceuticals and renewable energy. Steve possesses extensive experience assisting clients with government contract cost accounting, cost allowability and contract estimating and pricing matters. Specifically, he advises clients on resolving audit findings and disputes arising out of the Cost Accounting Standards (CAS), Cost Principles in the Federal Acquisition Regulation (FAR) and OMB Circulars and the Truth in Negotiations Act (TINA). Additionally, he handles client bid protest concerns, equitable adjustment or breach of contract claims, reverse-Freedom of Information Act (FOIA) cases, intellectual property (patents, software and data rights) matters and other contract and regulatory disputes. Steve resolves client disputes in the state and federal courts, the Boards of Contract Appeals and through Alternative Dispute Resolution (ADR) procedures. He pursues client bid protests with state and federal agencies, the Government Accountability Office and the courts. Steve aids clients with the implementation of government contract compliance policies and procedures, including assistance with Department of Defense (DoD) Business Systems development, internal assessment and with the defense against adequacy challenges to such client systems. He further conducts internal investigations and resolves allegations of contractor fraud under the False Claims Act (FCA), violation of law or regulation, overpayment or other alleged contractor wrongdoing. Steve is a Certified Management Accountant (CMA) designated by the Institute of Management Accountants (IMA). Prior to joining the Firm, he served on active duty as an officer in the United States Air Force. He was first assigned to Space and Missile Systems Center (SMC) where he was responsible for contractual matters related to the engineering support provided to the Air Force by its Federally‑Funded Research and Development Center (FFRDC), The Aerospace Corporation. While at SMC, he also worked closely with government and industry professionals to provide contractual support for the Titan IV Launch System program. He was then assigned to the Defense Contract Management Agency (DCMA) where he served in the contract administration offices responsible for the administration of all DoD contracts with Boeing North American, Inc.

Joel Pratt

Joel M. Pratt is a member of Denton’s Government Contracts practice in the Denver office where he focuses on all aspects of Government Contracts counseling and litigation. Joel has experience counseling clients on cost accounting issues and contractor business system reviews and has also assisted contractors in developing and pricing certified claims. Joel graduated from the University of Michigan Law School Order of the Coif and magna cum laude in 2014 where he served on the Michigan Law Review as the Executive Notes Editor and an Associate Editor. While earning his JD, Joel served as a judicial intern for the Honorable Alan M. Loeb and was a student attorney for the Michigan Unemployment Insurance Project and the Child Advocacy Law Clinic. Prior to joining the Firm, Joel worked as a law clerk for the Office of the Vice President and General Counsel of the University of Michigan.

Jerry McIntyre

Jeremiah J. McIntyre III is an associate in Dentons’ Denver office. He is a member of the Government Contracts department. Prior to joining Dentons, Mr. McIntyre was a legal intern for the United States Soccer Federation where he analyzed the Federation’s rights and obligations under various contracts and provided guidance under multiple state licensing, privacy and disclosure laws. Mr. McIntyre received his JD from Northwestern University School of Law in 2014 where he was an associate editor of the Northwestern Journal of Technology and Intellectual Property. In 2011, Mr. McIntyre received his undergraduate degree from Carleton College with a degree in Classical Languages.

Continuing Education Credits

CLP

1.0 credit per session; 5 credits for entire series

CPE (Finance)

1.5 credit per session; 6 credits for entire series

CLE

1.25 credit per session; 5 credits for entire series for AK, AZ, AR, CA, CO, FL, HI, ME, MT, NJ, NY, ND, OR, PA, VA, WI (if you need CLE for a state not listed, call us.)

CEU

0.125 credit per session; 0.5 credits for entire series

PDU

This course can be submitted to Project Management Institute (PMI) for PDU. Upon their approval, it may be worth 1.25 PDU credit per session; 5 PDU credits for entire series

Upcoming Seminars

Webinars & Virtual Classess