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Our lawyers have a wealth of experience strategizing about and negotiating transactions in which intellectual property rights under government contracts are of critical importance. We have negotiated with agencies ranging from military commands to the National Institutes of Health (“NIH”), on behalf of large and small business clients, in transactions involving a variety of technologies. We deal routinely with issues concerning unlimited rights, limited rights, and restricted computer software rights under Part 27 of the FAR, for both subject inventions and technical data, and with patent indemnity and authorization and consent issues, as well as with patent waiver and related Bayh-Dole Act issues under government grant programs, and IP rights under other transaction authority (“OTA”) agreements. Covington lawyers help clients secure, protect, and exercise patent and other intellectual property rights in these special contexts, where government agencies and contractors are subject to unique rules and requirements. Our experience encompasses:
- purchase, sales, and supply agreements;
- software copyright and patent licensing agreements;
- patent rights under agency grants (Department of Energy, Biomedical Advanced Research and Development Authority (“BARDA”), NIH and various Department of Defense components);
- technology research and development agreements; and
- cooperative research and development agreements (“CRADAs”).
Representative Matters
- Renegotiated NIH agreements concerning intellectual property rights arising out of the development, manufacture, and use of experimental vaccine supplies for international clinical trials. This project combined our expertise in intellectual property, government contracts, and life sciences to assure both adequate incentives for development and timely delivery of vaccine supplies.
- Provided advice concerning government rights in patents and technical data in a transaction dealing with the acquisition of cryptological assets.
- Negotiated special-purpose modified Authorization and Consent clause dealing with a key patent portfolio needed for a vaccine contract, where the patents in question had disputed subject-invention status.
- Advised a biomedical research company seeking to license federally-owned technology from the U.S. Department of Agriculture.
- Advised a major IT company regarding strategies for the retention of IP rights in classified development program funded by an intelligence agency.
- Negotiated a cooperative agreement with the U.S. Army Research Laboratory involving materials research, as well as advice on negotiation of research subcontracts with universities.
- Strategized with a major research pharmaceutical company concerning a response to a bioterror countermeasures RFP and negotiations with the Department of Health and Human Services concerning waiver or modification of data rights provisions under the FAR.
- Advised the Institute for Biomedical Research concerning ownership of intellectual property arising out of research and collaboration involving post-doctoral scholars studying at the NIH, Oxford University, and Cambridge University.
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