Intellectual Property (Patent/Data Rights)
Protecting intellectual property is a common concern for most businesses, but when contracting with the Federal government this interest takes on special significance. We regularly counsel clients regarding special rules and traps for the unwary contained in federal clauses, in order to develop practices and procedures, such as attention to marking and intellectual property audits, to protect valuable data and other rights when contracting with the government. We also assist clients seeking to license intellectual property rights in the context of government projects, such as to or from subcontractors and teammates. We work closely with our intellectual property group, which is equipped to handle any sort of infringement claim or challenge, as well as implement all of the traditional intellectual property protections involving patents, trademarks and copyrights. And, when our clients determine that the government is mistakenly seeking to release or exploit proprietary intellectual property, such as pursuant to the Freedom of Information Act, we represent them in actions to prevent wrongful release, or to secure compensation for wrongful use.
- Various major technology and pharmaceutical companies with respect to the Bayh-Dole Act, Cooperative Research and Development Agreements (CRADAs), and waivers of the "substantial US manufacturing" requirement for technology developed with US Government funds.
- Technology company in contracts relating to the development and deployment of laptops in public school systems.
- Various US Government contractors in data rights disputes with US Government agencies, including the US Army, US Navy, and Defense Threat Reduction Agency.
- Multiple technology and service providers and connection with contracts with US government agencies.
- Aircraft manufacturer regarding rights to technical data in a complex arrangement involving US Government purchase of multiple, integrated system components from different suppliers.
- AOL in connection with strategic alliances, joint ventures, licenses, agreements, and the IP and commercial aspects of over 20 acquisitions of strategic intellectual property rights and technology platforms.
- Online healthcare billing tool provider in negotiation of software and online services agreements with numerous public school districts across California.