Washington, D.C., partner William Bergmann and associate Bukola Aina co-authored an article, "Intellectual Property Rights In Government Contracting," which was published in the December 2009 edition of Intellectual Property Counselor, a Thomson Reuters publication.
According to the authors, "In the global economy, Intellectual Property (IP) rights (including patents, copyrights, trademarks, and trade secrets) are often some of the most valuable assets owned by a company. Maintaining IP rights is crucial to both small and large companies, especially within industries that are highly technical. Companies engaging in business with government agencies are faced with a unique set of issues related to retaining and protecting their IP rights. Government contracting has the advantage of providing a company with access to government funding for (i) research and development work relating to new technology; and (ii) further contract work leading to the commercialization of that new technology (for use by the government or private sector)."
Bergmann and Aina continue: "Government contractors can retain a significant portion of their IP rights during this process, but only by adhering to the various statutes and regulations governing IP rights in government procurement. In addition to protecting their own IP rights, government contractors must also be prepared to defend themselves against IP infringement claims that may be brought by other companies as a result of work performed under government contracts. This issue often occurs when the government awards a contract to one of two competitors and the other competitor alleges that carrying out the contract necessarily violates its IP rights."
Bergmann and Aina's article goes on to discuss:
The authors conclude: "IP rights are an important part of government contracting. Provided that contractors comply with the contracting provisions governing the disposition of IP rights, they often have the opportunity to develop and retain IP rights, while being funded by the federal government. Government policy encourages this, provided that the government usually takes a nonexclusive license in the IP being developed. Contractors must also be aware of provisions relating to infringement actions against the government based on work performed by the contractor in order to minimize their associated liability."