Negotiating IP Licenses in Government Contracts
Why Attend?
The U.S. government is a major consumer and producer of high technology. Many government contracts require licensing of intellectual property — patents, copyrights, trade secrets, or trademarks — and professionals involved in such negotiations must understand why doing business with the government is different from licensing with private parties. They also need an understanding of basic rules that apply to the formation of government contracts, a grasp of how government license agreements are administered, and appreciation for the key issues that arise in the enforcement of IP in the government contracting context.
This succinct program provides the licensing professional with a solid grounding in these key areas.
The program features presentations by a balanced panel that includes a Department of Defense attorney, two private practitioners with extensive government contracting experience, and a leading academic in the field.
Three of the faculty members — David S. Bloch, Richard M. Gray, and James McEwen — are co-authors of a new text, Intellectual Property in Government Contracts: Protecting and Enforcing IP at the State and Federal Level(Oxford, 2009). The Planning Chair, Professor Danielle M. Conway, is the co-author of Intellectual Property, Software, and Information Licensing: Law and Practice (BNA 2007, 2008 & 2009 Cumulative Supplements) and Licensing Intellectual Property: Law and Application (Aspen, 2008), among others.
Time is provided in the program to address questions from registrants.
Who Should Attend
This program is designed for attorneys and other professionals involved in government contracting. For those new to the field, the program provides a primer on key IP issues in government contracting. For the experienced professional, the program offers a checklist of essential factors they should consider for every licensing agreement.
Planning Chairs
Professor Danielle M. Conway, Dir, Hawaii Procurement Inst., University of Hawaii, William S. Richardson School of Law, Honolulu, Hawaii
Faculty
David S. Bloch, Winston & Strawn LLP, San Francisco, California
Richard M. Gray, U.S. Department of Defense, Washington, D.C.
James G. McEwen, Stein McEwen LLP, Washington, D.C.
Program Schedule
MONDAY, NOVEMBER 9, 2009
12:00 p.m. Introduction and Course Overview
I. Why Dealing with the Government Is Different
Sovereign Immunity
The Christian Doctrine and Contract Terms Incorporated by Law
The Federal Acquisition Regulation and its Supplements
What the Government Can and Cannot Negotiate (and Why)
II. Types of IP Typically Licensed
Patents
Copyrights
Trade Secrets
Trademarks
Technical Data/Computer Software
III. Rules for Formation of License Agreements
Authority to Contract
Government Requirements, Solicitation, and Contract Formation
Default License Rights under Federal Law
Commercial and Negotiated License Rights
The Necessity of Asserting Proprietary Rights
Non-Standard Contractual Vehicles for IP
IV. Rules for Administration
What is a Deliverable?
Protecting Your Deliverable
IP Developed During the Performance of a Government Contract
V. Overview of Enforcement
Restrictions on Causes of Action
Restrictions on Recovery
Choice of Forum
VI. Questions and Answers
1:45 p.m. Adjournment
Times
12 noon - 1:45 pm Eastern
11 am - 12:45 pm Central
10 am - 11:45 am Mountain
9 am - 10:45 am Pacific and Arizona
8 am - 9:45 am Alaska
7 am 8:45 am Hawaii
