Agenda -- Introduction and Basic
Principles
• Importance of Intellectual Property and Data Rights in acquisitions with small
business owners
• Key Definitions
• Government Licensing Rights (nature of technology & source of funding)
– Unlimited
– Government Purpose rights (“GPR”)
– Limited
– Restricted
– Specifically (aka “Specially”) Negotiated
• Acquisition Approaches
– Modularity, Segregability, Interoperability
• SBIR and STTR Programs/Data Rights
• IP Strategy
• Emerging Technologies & IP (e.g. cloud computing, AI, Supply Chain,
Cybersecurity, Open source software)
• DAU – Strategic IP/Data Rights Education Plan
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Importance of Data Rights
in Acquisition
• Data rights can be crucial in total life cycle
management of acquisition
• Appreciation of this sometimes only comes
long after initial contracting
• Data rights laws/policy requirements are
complicated and changing
• Careful attention to Data Rights/IP issues
during Data and Requirements Development
is critical
3
Intellectual Property v. Data Rights
• Intellectual Property – expression of a new and useful
concept; legally protected; originator (e.g. inventor, author)
granted certain exclusive rights – “Intangible assets”
• “Data Rights” – shorthand way to refer to the Government’s
license rights in two major categories of valuable intellectual
property (e.g. Technical data & Computer software). The
Federal Acquisition Regulations (FAR) prescribe policies,
procedures and clauses pertaining to data rights for civilian
agencies and the Defense Federal Acquisition Regulations
(DFARS) for DoD
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Key Data Rights Definitions
• “Technical Data” – recorded information, regardless of the form or
method of the recording, of a scientific or technical nature
(including
computer software documentation); Does not include computer
software or data incidental to contract administration (e.g. financial,
management information)
• “Computer Software” – computer programs, source code, source code
listings, object code listings, design details, algorithms, processes, flow
charts, formulae, and related material;
enables the software to be
reproduced, recreated, or recompiled
; Does not include computer
databases or computer software documentation
• “Computer Software Documentation” – owner’s manuals, user’s
manuals, installation instructions, operating instructions, and other
similar items, regardless of storage medium, that
explain the capabilities
of the computer software or provide instructions for using the software
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IP Subject Published Examples
Patents New technology
know-how
Yes a drug formula,
Blackberry® server
method
Copyrights Artistic expression in
tangible form
Yes music, paintings, novel,
blueprint of a house or
machine, software
Trade Secrets Any information more
valuable for business
due to its secrecy
No blueprint of a machine,
Coke® formula, a
customer list
Trademarks A name, mark, color,
pattern, sound
indicating a source of
goods or services
Yes KFC®, General Mills®,
Ownings-Corning® pink,
Intel,® sound,
milCloud,® DCS,
Defense Collaboration
Services
Intellectual Property – Common Types
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Rights in Technical Data and
Computer Software under the DFARs
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SBIR and STTR Programs and STTRSS
• Small Business Innovation Research (SBIR) Program
• Federal Agencies with extramural research budgets over $100 million have
a percentage reserved for contracts or grants to small businesses; Funding
– contracts or grants
• Small Business Technology Transfer (STTR) Program
• Federal agencies with an extramural research budgets in excel of $1 billion
• SBIR and STTR Goals:
o Help certain small businesses conduct research and development (R&D)
o Stimulate technological innovation in private sector
o Encourage participation by socio-economically disadvantaged firms
o Strengthen role of small businesses in meeting Federal research and
development needs
o Funds cooperative research and development projects with small
businesses in partnership with small businesses in partnership with not-
for-profit research institutions (e.g. universities) to move research to the
marketplace
o Bridge gap between basic research and the marketplace
SBIR and Data rights
DFARS 252.227-7018
• SBIR data rights –“a royalty-free license for the [USG] . . . to use, modify,
reproduce, release, perform, display, or disclose [TD or CS] generated under an
SBIR award as follows:
– Limited Rights in SBIR Technical Data (TD)
– Restricted Rights in SBIR Computer Software (CS)
• SBIR license applies from contract award through 5 years after completion of the
project from which such data were generated.
– If project ever ends, after the 5 years, the USG
has an unlimited rights license.
• USG has Unlimited Rights in Form, Fit or Function (FFF) and Operations,
Maintenance, Installation or Training (OMIT) data
IP/Data Rights Issues/Challenges
DoD IP/Data Rights Challenges
10
• Identifying IP/Data Rights needs (Process &
Participation)
• Obtaining Sufficient IP and Data Rights Data
Provided with Disputed Assertion of Rights
• Lack of IP Expertise/Training
• IP/Data Rights and Acquisition Planning
Source: IDA, “Department of Defense Access to
Intellectual Property for Weapon Systems Sustainment,”
May 2017
IP/Data Rights Issues/Challenges
• The Problem for Industry …
– IP overreach
• GPR in everything (regardless of need)
• Unlimited Rights when limited Rights may be sufficient
– Failure to account for industry investment and business model
• Change sustainment model
– Failure to negotiate and inform industry
• Forces industry to investment decisions without knowing customer IP plans
creating disconnect
– Ambiguous and poorly defined contract terms
Source: “2018 REPORT GOVERNMENT-INDUSTRY ADVISORY PANEL ON TECHNICAL
DATA RIGHTS” NOVEMBER 13, 2018 (DAU - LOG 465 Presentation – James McEwen (LMC)
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Data rights/
Vender perspective
• Data Rights have value
– Intrinsic Value – valuing the company’s IP
– Competition Value
– Revenue Source
– Means of limiting competition
• Working with the vendor (especially
important for small business owners)
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Section 813 Review --
Congressional Mandate
• FY 2016 NDAA – establishes Government-industry advisory panel
• Scope of Review
– DoD doesn’t pay more than once for same work
– DoD contractors are appropriately rewarded for their innovation and
invention
– Provide for cost-effective-re-procurement, sustainment, modification
and upgrades to DoD systems
– Encourage private sector investment in new products, technologies,
and processes relevant to DoD mission
– Ensure DoD has appropriate access to innovative products,
technologies, and processes developed for commercial use
– Encourage use of Modular Open System Architecture (MOSA)
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Section 813 Panel Report --
Recommendations
• Tension Point Issues
• Statutory and Legislative Recommendations
• Regulatory, Policy, and Practical Recommendations
• Cross-cutting Principles and Threads
– Long-term IP Planning early in acquisition process
– MOSA
– Specially Negotiated Licenses
– IP Strategies
– Education and Training
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DoD Instruction 5010.44, Intellectual
Property (IP) Acquisition and Licensing
• Section 4.1 – IP Strategy
• Identify and manage full spectrum of IP and related matters – product life cycle
– How program management will assess long-term program requirements, and total
ownership costs of IP deliverables and associated license rights for competitive and
affordable operation, maintenance, modernization, and sustainment (entire
product life cycle)
– How IP and related matters necessary to support the program’s use of modular
open systems approaches; guidance on how solicitations and contracts will
• Identify and require all major systems interfaces to be based on widely
supported and consensus-based standards
• Requirements to include acquire appropriate IP rights in major systems
interfaces
• Appropriate requirements for other non-major systems interfaces (e.g.
interfaces necessary to segregation and reintegration activities)
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DoD Instruction 5010.44, Intellectual
Property (IP) Acquisition and Licensing
• Section 4.1 – IP Strategy
– Customize IP strategies based on common, shared and unique
characteristics of the system and components
– Consider use of specially negotiated licenses to acquire customized
IP deliverables (e.g. technical data, computer software) and
associated license rights
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Developing an IP Strategy
• Phases
– Pre-planning
– Solicitation & Source Selection; Negotiation
– Contract Performance
– Delivery: Inspection & Acceptance
– The Payoff: Retention and Reuse (and Recordkeeping)
Source: Intellectual Property Strategy Guidance – Prepared by the
Department of Defense Open Systems Architecture-Data Rights Team August
2014
The Key is Strategic Thinking!
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Developing an IP Strategy
SBIR Acquisitions
– Identify the Need – Strategic Thinking and Planning
• What type of data or technology do you need (GOTS, COTS or
hybrid)?
• How will you use it (short and long-term throughout program life
cycle)?
• What data rights to you need?
• Will the vendor need to reconfigure or integrate into a Govt.
platform or system?
– Contract Considerations
• Are all the stakeholders (e.g. KO, PM, Technical SMEs, Contracting
& IP attorneys) at the table during all contract phases?
• Program Budget
• Are requirements specific and ambiguities addressed in the
contract?
• Data delivery and rights assertions
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DoD Instruction 5010.44, Intellectual
Property (IP) Acquisition and Licensing
• Section 3: The IP Cadre
– Facilitates development and use of competent and
consistent approach to acquiring, licensing, and
managing IP
– Provide timely expert advice, assistance, and
resources to the acquisition workforce on IP matters
– Advise, assist, and provide resources to DoD
Components on IP matters at various stages of life
cycle
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Emerging Technologies and Issues -- –
IP/Data Rights Considerations
• MOSA, segregability and licensing
• Open Systems Architectures (OSA)
– “OSA Approach” combines OSA technical design
with an “open business model”
• Open Source Software (OSS)
– No “restrictions” on use or re-distribution of the
code; But there may be conditions or affirmative
obligations
• Cloud computing, AI, 3-D printing, cybersecurity,
supply chain
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DAU – IP/Data Rights Education Plan
• IP Learning Asset Review
• Delete, Modify & Add
– What are the customer’s needs?
– Complying with DoD policy (IPWG)
– Addressing new technologies and IP
• Collaborating with industry (e.g. Industry-sector
series)
• Delivery Formats (e.g. online, in-class, Ted-Talk,
short videos, site visits, “Checklists,” Lunch & Learn,
Brown bag, articles, scenario exercises)
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Back Up Slides
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Patents/Inventions
• Definition: Invention
– An Invention/discovery is a creation of the mind.
• What is a Patent?
– A Patent represents the grant of an exclusionary property right to an inventor
that permits him/her to exclude others from making, using, or selling the
claimed invention for a limited period of time. U.S. Patents are issued by the
United States Patent and Trademark Office.
– To be considered for patentability, the invention must be a NEW, USEFUL and
NON-OBVIOUS invention.
– Statutory Subject Matter: Articles of Manufacture, Machines, Compositions of
Matter, Methods and Improvements thereof, for example, a drug, a computer
program, Polaroid development process and a rail gun
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Copyrights
• Basis: United States Constitution, Article 1, Section 8, Clause 8.
• Definition: A right granted by law to creators of original works of authorship fixed in any
tangible medium of expression. Owners of the copyrights are provided with the exclusive
right to control reproduction, display, performance, distribution, and modification of the
work.
• Works by officers or employees of the Government, as part of their official duties are not
protected by copyright in the U.S. Copyrights may not be registered with the Library of
Congress, U.S. Copyright Office. Government works are not in the public domain, there is
just no U.S. copyright.
• Government is permitted to own or possess rights in copyrights established by third
parties – a license or transferred by copyright assignment, see Special Works.
• Software can be protected by a patent, a copyright and may have trade secrets.
• A copyright notice need not appear on the work. Assume copyright protection and seek
permission to use the copyrighted work.
• CENDI, Frequently Asked Questions about Copyrights, and Open Source Software.
• Copyrights underlie Data Rights (Technical Data and Computer Software).
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Trademarks
• Definition: A trademark is a word, phrase, symbol, and/or
design that identifies and distinguishes the source of the
goods of one party from those of others. A service mark is a
word, phrase, symbol, and/or design that identifies and
distinguishes the source of a service rather than goods.
• Examples: brand names, slogans, and logos (e.g. Microsoft,
Apple, McDonald’s, DCS).
• Do not expire after a set term of years; can last forever if file
specific documents and pay fees at regular intervals.
• Trademark rights come from actual “use”
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QUESTIONS?
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