Intellectual Property Rights

Your business depends upon your competitive edge. Your competitive edge is your intellectual property. How well your intellectual property is protected may well mean the difference between success in the highly competitive government market and failure. To be most successful, you must both maintain your current intellectual property, and protect future innovations.

Intellectual property protection under government contracts and assistance awards is a complex and inter-woven set of regulations and laws. Patent, copyright, trade secrets and specific contract terms can all interact and be present in your IP portfolio. The rules are made even more arcane by differing rules and results depending upon the procurement vehicle used (contract, CRADA, grant, cooperative agreement, other transaction, etc.), the agency (DOD, DOE, DOJ, etc), the subject matter (research, development, production, etc), and the type of protection employed (copyright, trade secret, patent, etc.) as well as other factors.

Many law firms provide excellent, general IP counsel. A number of firms provide Government Contracts counsel. Williamson Law Group has extensive experience combining both areas and provides specific and specialized IP experience under Government contracts and federal assistance awards. We are knowledgeable and experienced not only in the issues arising under the Standard FAR and DFARS Basic Data Rights Clauses, but also in the less common IP clauses and the complex issues found at other agencies such as NASA, NSF, DOE, and faced by universities.

Representative Engagements:

Worked closely with client IP attorneys, business attorneys and engineering staff to identify and segregate critical IP to the lowest segregable level under an OTA. Protected company- critical IP by, e.g., managing the funding source, and/or limiting rights under tailored license agreements.
Developed the software and system IP strategy for a client-developed medial administration system. Drafted teaming agreement IP sections, drafted an associate contractor agreement, drafted the enterprise software license for their SaaS product, and drafted IP provisions for a government proposal.
Represented multiple clients regarding advance patent waivers with the DOE, and obtained waivers.
Drafted and negotiated a special technical data license for a commercial client who developed and markets a software generator of large-scale fully synthetic data sets for testing purposes. Client was negotiating a contract with the US Army to modify their test data, and wanted to limit government use to the specific program office and supporting contractors.
Lead drafter and negotiator for a mail sorting machine development and production contract that incorporated existing client technology and new hardware and control software. Negotiated all terms and conditions including all IP provisions for this project. Drafted and negotiated subcontract terms and conditions, including IP provisions, with all subcontractors.
Routinely advises clients regarding government contract IP clauses and IP rights, including patent rights, technical data and software rights, and copyright protections.
Reviewed IP disclosures; developed strategies for IP protection; managed the patent portfolio; negotiated royalty agreements for numerous clients.

Your trusted partner to protect intellectual property rights under government contracts.

Data Rights

Understanding ownership and protecting data created under government contracts and assistance awards can be critical to your business. “Data” in this context includes computer software, technical data created under the award and all other recorded information, regardless of the media. Williamson Law Group has experience protecting all types of data rights, and practices across many Government agencies and with all types of funding. Their experts are ready to advise your Company on how to protect your rights and maximize profits.

License Agreement

Limiting use or distribution of your Company’s valuable IP and software may be critically important to your business. For instance, if you are thinking of using commercially developed software in government contracts or federal assistance awards you should include limits on its use and distribution. Williamson Law Group is experienced in drafting and negotiating license agreements across Government agencies and under all funding vehicles, including contracts, cooperative agreements, grants and other transactions to protect your valuable IP.

Patent Protection

Patent protection may be a powerful tool to protect your Company’s valuable inventions. Williamson Law Group advises on commercial rights and patentable inventions developed under government contracts, grants, “other transactions” or cooperative research and development agreements. We also counsel and render opinions on patent rights involving issues of infringement, validity, and freedom to operate, as well as conduct patent due diligence, negotiate and prepare patent licenses and other transaction agreements

Software Protection

Protecting computer software under Government contracts and assistance awards can be complex. It is critical to fully understand such factors as the source of funding, the agency involved, the IP clauses in the award, the type of contract or award, and the history and funding of the software development. Williamson Law Group has experience protecting all types of computer software, and practices across many Government agencies and with all types of funding. Williamson Law Group experts are ready to advise your Company on how to protect your computer software and maximize profits.

Subcontractor IP Rights

Subcontractors and Subawardees must fully understand their rights when Government funding is involved. Both the Government and the prime contractor/awardee may have IP privileges. Understanding subcontractor IP rights, including such things as the bounds of what the prime contractor can access, how to mark materials, how to distribute materials, and how to limit Government and prime access and ownership may be critical to business success. Williamson Law Group attorneys have advised many subcontractors and subawardees and are experienced in all aspects of IP protection, subcontracts and subawards.

Technical Data

Technical data is recorded information (regardless of the form or method of the recording) of a scientific or technical nature that was produced using Government funding. Technical data does not include computer software, but does include technical information stored in computer databases. Ensuring proper ownership of technical data and limiting distribution of the technical data may be critical to your business. Williamson Law Group has experience protecting all types of technical data, and practices across many Government agencies and with all types of funding. We have also drafted and negotiated many licenses that limit distribution to protect the owners. Williamson Law Group experts are ready to advise your Company on how to protect your technical data, limit distribution, and maximize profits.

Trade Secrets

Trade secrets are often at the center of a Company’s business. Protecting your valuable trade secrets in government contracts and federal assistance awards may be critical for your business’ future. Williamson Law Group has experience protecting trade secrets under all types of government funding, and across many Government agencies. Williamson Law Group experts are ready to advise your Company on how to protect your trade secrets and maximize profits.