Intellectual Property in Government Contracts Protecting and Enforcing IP at the State and Federal Level

Author: James McEwen; David Bloch; Richard Gray; John Lucas
Publisher: Oxford University Press USA
ISBN: 9780199751112
Published In: July 2012
Format: Paperback , 600 pages
Jurisdiction: U.S. ? Disclaimer:
Countri(es) stated herein are used as reference only

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Multifaceted investigation of U.S. federal and state level IP procurement practices, providing valuable advice to attorneys on both sides of intellectual property litigation in government contracts
Provides practical guidance to avoid pitfalls of government IP contracting, and remedies for government misuse of IP rights
Written by four prominent intellectual property specialists whose combined experience spans the private and government sectors
Comprehensively updated, rewritten, and revised to reflect new developments in federal intellectual property and procurement law over the last 3 years, with dramatically expanded coverage of civilian agencies
Revised and updated analysis of IP and procurement laws in all 50 States and the District of Columbia.
Expanded coverage of administrative claims procedures.
New discussions of government out-licensing of IP and uses of open-source software
Expanded guidance and templates for negotiating specialized IP licenses

State and national governments often meet their technologically-intensive needs by entering into contracts and financing deals with private companies. These contracts, and the complex rules that accompany them, have elevated the risk of intellectual property loss for private-sector contractors. Intellectual Property in Government Contracts, Second Edition provides a comprehensive appraisal of United States federal procurement laws relating to Intellectual Property, plus a detailed survey of state procurement rules and a comparison of the approaches adopted by the European Union and other industrialized countries. It provides strategic guidance for the protection of IP in government contracts, and the various ways to enforce IP rights in the event of government violation. Written by knowledgeable and highly-experienced professionals in the field, this book offers detailed advice and commentary concerning strategies, opportunities, and traps for the unwary. This book assists attorneys on both sides of the equation to approach government deals with the dual objectives to maximize the tremendous upside potential while protecting IP rights. This Second Edition has been comprehensively updated, rewritten, and revised to reflect new developments in federal intellectual property and procurement law over the last 3 years. It includes considerably expanded coverage of civilian agencies.

Readership: IP Attorneys (US & international, law firm & in-house), business/corporations involved in state and federal contracting, government-sector professionals dealing with IP procurement, government lawyers, academics

James G. McEwen, a founding partner of Stein McEwen & Bui, has prepared and prosecuted patent applications in computer hardware and software, control systems, mechanical and optical devices, semiconductor manufacturing, batteries, and display device technologies. In addition, Mr. McEwen has prepared and been involved in patent validity and infringement opinions, reissue and reexamination proceedings, intellectual property licensing and settlement negotiations, intellectual property licensing with elements of the Federal government, trademark prosecution, domain name disputes, trade secret protection, and provided litigation support in patent infringement claims.

David S. Bloch is a partner with the law firm of Winston & Strawn, LLP., San Francisco office. He focuses his practice on complex intellectual property disputes, as well as the intersections of antitrust, government contracts, and intellectual property law. Mr. Bloch is a graduate of Reed College (B.A.) and The George Washington University (M.P.H., J.D. with honors), and he served as a Fellow in International Trade Law at the University Institute of European Studies in Turin, Italy, in 1997.

Richard M. Gray is Associate General Counsel in the Office of the Deputy General Counsel for Acquisition & Logistics, Department of Defense. His primary duties include advising the Assistant Secretary of Defense for Networks and Information Integration / DoD Chief Information Officer, and the Under Secretary of Defense for Acquisition, Technology, and Logistics, on cyberspace and
information law, intellectual property, information and technology acquisitions, and technology transfer. He chairs the Defense Acquisition Regulations Council's Patents, Data, and Copyright Committee, and serves as a subject matter specialist for the Federal Acquisition Regulations Law Team. Mr. Gray's contributions to this work are made in his personal capacity, not in connection with his official duties at the Department of Defense.

John T. Lucas is the Assistant General Counsel for Technology Transfer and Intellectual Property for the U.S. Department of Energy (DOE) in Washington, D.C. He is responsible for conducting the DOE's intellectual property and technology transfer programs and formulating DOE policy in those areas. Throughout his career at DOE, he has counseled program clients on issues concerning patent, trademark, and copyright law, as well as licensing, litigation, and technology transfer. Before joining DOE in 1994, Mr. Lucas was in private practice in Chicago, IL. Mr. Lucas holds a B.S. in Chemical Engineering from the University of Virginia, a J.D. from George Mason University School of Law, and a LL.M. in Intellectual Property with honors from the John Marshall Law School in Chicago. He is a member of the Illinois and District of Columbia Bars, and he is admitted to practice before the U.S. Court of Appeals for the Federal Circuit and the Supreme Court. He has served as President of the Government Intellectual Property Law Association and has chaired the Interagency Working Group on Alternate Dispute Resolution and Intellectual Property. Mr. Lucas' contributions to this work are made in his personal capacity, not in connection with his official duties at DOE.

"McEwen, Bloch and Gray have compiled a detailed, comprehensive, and path-breaking guide to the complex landscape at the intersection of government procurement and intellectual property. It is destined to become an essential navigation aide to all who work in this important area."
--Robert Brauneis, Associate Professor of Law & Co-Director of the IP Law Program,
The George Washington University Law School

"This work will prove a valuable resource to attorneys practicing in the field of government procurement of intellectual property for a very long time to come."
--Danielle Conway-Jones, Professor of Law & Director, University of Hawaii Procurement Institute, William S. Richardson School of Law, USA and Chair-in-Law, La Trobe University Faculty of Law & Management, Australia

"This book provides a wealth of information. With a healthy dose of strategy and practical advice, McEwen, Bloch and Gray present the 'nuts and bolts' of how intellectual property rights are addressed in all major forms of government contracts, and explain how private and governmental parties might vary the standard forms to suit their specific purposes."
--Dean A. Manson, Senior Vice President, General Counsel & Secretary
Hughes Communications, Inc.