Intellectual Property

Your business’ intellectual property is more than an asset—it’s the competitive advantage that distinguishes your capabilities, and is often the reason you are in business. When selling to the federal government, IP rights are governed by acquisition regulations and programs like the Small Business Innovation Research (SBIR) that also define IP rights. From the beginning of the acquisition process throughout performance, and even after, it is vital that you identify, mark, and assert your IP rights.

At Cassidy Law, we help you understand the federal government’s approach to IP, and develop IP strategies that align with your objectives, whether that is to scale or acquisition.

IP Strategy Before and During Proposal Submission

IP protection begins long before contract award. We work with you to:

• Accurately assert rights in IP such as technical data, software, algorithms, and proprietary methodologies in proposals and contracts;
• Ensure IP representations and markings are complete, defensible, and consistent with Federal Acquisition Regulation (FAR), Defense Federal Acquisition Regulation Supplement (DFARS), and Small Business Innovation Research (SBIR) requirements;
• Determine the federal government rights in your IP.

Structuring and Managing IP Ownership

Clear and complete documentation is essential to protecting IP and to demonstrating your ownership in IP when considering a merger, acquisition, or taking on investors. We collaborate with you to:

• Develop IP strategies so your existing and newly developed IP is identified and catalogued;
• Track funding sources used to develop IP, including private, mixed, and government funds;
• Identify third-party code, open-source components, and your license rights when using third-party code or software;
• Establish internal controls for marking, protecting, and managing proprietary information;
• Document your IP strategies, controls, and ownerships so you are prepared for due diligence.

Navigating Federal Government IP Regulations

Federal government contracting imposes unique rules on IP ownership and licensing. We guide you through:

• Understanding FAR, DFARS, SBIR, and Other Transaction Authority (OTA) IP such as data rights and software licensing;
• IP considerations under OTAs and SBIR/STTR programs;
• Government purpose rights, limited rights, restricted rights, and negotiated license structures;
• Developing strategies to allow for commercial use of your IP while meeting agency mission needs.

Managing Risks With Contracts

We translate IP strategy into enforceable agreements by:

• Drafting and negotiating federal government contracts and subcontracts;
• Preparing licensing agreements, NDAs, EULAs, and service agreements that protect proprietary technology;
• Aligning subcontractor and teaming partner obligations with prime contract IP requirements.

At Cassidy Law, we recognize that innovation moves faster than acquisition regulations. You need to maintain this momentum so your IP stays relevant while developing strategies to protect IP when selling to the federal government.

• Worked with OTA awardee to revise and negotiate a contract worth tens of millions of dollars, to include redrafting entirely the intellectual property section of the OTA.
• Advised large trade association on protecting its copyrighted materials in traditional FAR contracts, cooperative agreements and MOUs with the federal government, to include redrafting intellectual property related terms and conditions.
• Worked with SBIR awardee to revise its statement of work with the federal government, its statement of work with its subcontractor, and its assertion of intellectual property rights to assure that the contract documents were aligned to make clear the awardee owned its intellectual property and to clarify the  government’s license rights.
• Drafted teaming agreements and subcontracts related to its work for the federal government developing software solutions and operational technology and control systems, to include terms defining intellectual property ownership and license rights.
• Advised NASA contractor on using legal requirements related to possibly using intellectual property it developed on its own and that it used in performing its federal government contracts to develop digital assets it considered selling.
• Developed a no-cost contract for a SBIR awardee to use to sell its software to the federal government.
• Advised SBIR awardee on its ownership rights in intellectual property developed by its business partners who were universities, non-profits and commercial businesses.